`
`UNITED STATES DISTRICT COURT
`
`DISTRICT OF NEW HAMPSHIRE
`
`T-Peg, Inc. and
`Timberpeg East, Inc.,
`Plaintiffs
`
`v.
`
`Vermont Timber Works, Inc.
`and Douglas S. Friant,
`Defendants
`
`Civil No. 03-cv-462-SM
`Opinion No. 2005 DNH 152
`
`O R D E R
`
`Defendants (collectively “VTW”) prevailed in plaintiffs’
`
`(collectively “Timberpeg”) copyright infringement suit.
`
`Defendants now move for costs and attorneys’ fees. Plaintiffs
`
`object. For the reasons given below, VTW’s motion for attorneys’
`
`fees is granted.
`
`Under the Copyright Act, “the court in its discretion . . .
`
`may . . . award a reasonable attorney’s fee to the prevailing
`
`party as a part of the costs.” 17 U.S.C. § 505. A number of
`
`factors are properly considered in determining fee awards.
`
`These factors include “frivolousness, motivation,
`objective unreasonableness (both in the factual and in
`the legal components of the case) and the need in
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 2 of 17
`
`particular circumstances to advance considerations of
`compensation and deterrence.” Lieb v. Topstone
`Industries, Inc., 788 F.2d 151, 156 ([3d Cir.] 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.1
`
`Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994). When
`
`assessing factors such as frivolousness and objective
`
`unreasonableness, the analysis should focus on what a party knew
`
`when it pressed a claim or defense, rather than on what decisions
`
`that party might have made with the benefit of the court’s
`
`subsequent resolution of the case. See InvesSys, Inc. v. McGraw-
`
`Hill Cos., 369 F.3d 16, 21 (1st Cir. 2004) (citing Tang v. R.I.
`
`Dep’t of Elderly Affairs, 163 F.3d 7, 13 (1st Cir. 1998)).
`
`Here, it might be a stretch to say that Timberpeg’s suit was
`
`patently frivolous from the outset. When Timberpeg filed suit,
`
`its agents knew that: (1) Stanley Isbitski was a former
`
`client/customer for whom Timberpeg prepared several sets of house
`
`1 “[T]he overriding purpose of the Copyright Act [is] to
`encourage the production of original literary, artistic, and
`musical expression for the public good.” Lotus Dev. Corp. v.
`Borland Int’l, Inc., 140 F.3d 70, 73 (1st Cir. 1998) (citing
`Fogerty, 510 U.S. at 534).
`
`2
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 3 of 17
`
`plans; (2) one set of Timberpeg’s plans had been placed on file
`
`by Isbitski with the Town of Salisbury; (3) Isbitski showed
`
`Timberpeg’s plans to VTW; (4) VTW designed a post-and-beam frame
`
`to support a portion of the house designed by Timberpeg; and (5)
`
`the house ultimately built on the VTW frame was substantially
`
`similar in appearance and lay-out to the house Timberpeg designed
`
`for Isbitski. Based upon that knowledge, Timberpeg could have
`
`plausibly thought, initially at least, that VTW copied its
`
`architectural plans.
`
`Objective reasonableness, however, is a different matter.
`
`The objective reasonableness inquiry includes an examination of
`
`both the factual basis and the legal basis for a party’s claim or
`
`defense. Fogerty, 510 U.S. at 534 n.19.
`
`Timberpeg argues, based upon the undisputed fact that the
`
`VTW frame was capable of supporting a portion of the house
`
`Timberpeg designed, that it was objectively reasonable for it to
`
`conclude, as a factual matter, that VTW’s “timberframe must have
`
`been prepared on the basis of [Timberpeg’s] architectural plans.”
`
`The reasonableness of that conclusion was bolstered, Timberpeg
`
`3
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 4 of 17
`
`contends, by its discovery, prior to filing suit, that Isbitski
`
`had actually shown Timberpeg’s plans to a VTW frame designer.
`
`While it might have been objectively reasonable, as a factual
`
`matter, for Timberpeg to have concluded that VTW based its frame
`
`design on the floor plans and elevations Timberpeg had prepared
`
`for Isbitski, it was certainly not reasonable for Timberpeg to
`
`conclude that VTW copied a Timberpeg frame design, since
`
`Timberpeg never designed a frame.
`
`Timberpeg also contends that its legal theory of liability
`
`was objectively reasonable. Relying upon language from Hunt v.
`
`Pasternack, 192 F.3d 877 (9th Cir. 1999), and the legislative
`
`history of the Architectural Works Copyright Protection Act
`
`(“AWCPA”), Timberpeg grounded its copyright infringement claim on
`
`VTW’s “mere use[] of the plans to design a structure, as opposed
`
`to first duplicating the plans [and] then using the duplicated
`
`plans to design/create a structure.” The question, then, is
`
`whether it was objectively reasonable for Timberpeg to assert
`
`that VTW’s timberframe design, or the timberframe itself,
`
`constituted an infringing copy of Timberpeg’s architectural plans
`
`4
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 5 of 17
`
`or the architectural work embodied in those plans. The answer,
`
`quite plainly, is “no.”
`
`Academic support does exist for the proposition that a
`
`completed building or structure can itself constitute an
`
`infringing copy of an architectural work. See, e.g., Louis
`
`Altman, Copyright on Architectural Works, 33 IDEA 1, 61 (1992)
`
`(“In contrast to the pre-1990 law, building designs covered by
`
`the Architectural Works Copyright Protection Act can be infringed
`
`not only by copying the design in the form of two-dimensional
`
`plans or drawings or a three-dimensional model, but also by the
`
`construction of a full-sized building which embodies the
`
`protected design . . .”) (footnotes omitted); Andrew S. Pollock,
`
`Comment, The Architectural Works Copyright Protection Act: An
`
`Analysis of Probable Ramifications and Arising Issues, 70 NEB. L.
`
`REV. 873, 881-87 (1991). Moreover, as Timberpeg correctly notes,
`
`Hunt characterizes the House Report on the AWCPA as making it
`
`“clear that an unconstructed work, embodied only in plans or
`
`drawings, can be infringed by a structure that embodies the
`
`copied design.” 192 F.3d at 880 (emphasis added). And, H.R.
`
`REP. No. 101-735, reprinted in 1990 U.S.C.C.A.N. 6935, uses the
`
`5
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 6 of 17
`
`term “infringing buildings” at several points. Id. at 6944 &
`
`6953 n.50.
`
`So, it cannot be said that Timberpeg’s legal theory of
`
`liability – that a structure can itself constitute an infringing
`
`copy of an architectural work – was, in the abstract, objectively
`
`unreasonable. But the issue here is more focused. First, VTW
`
`did not design or construct a building that looked like the one
`
`designed by Timberpeg. Indeed, VTW did not design or construct
`
`any building at all; it designed and constructed a discrete
`
`component of a building - a post-and-beam frame. Timberpeg did
`
`not design a post-and-beam frame; it simply designed floor plans
`
`and elevations according to the general specifications provided
`
`by Isbitski. And, the record is clear that a number of
`
`alternative frame types and designs would suffice to support the
`
`building Timberpeg designed.
`
`When Timberpeg filed suit it knew that it had not developed
`
`a frame design for Isbitski (that is, it never created an
`
`architectural work related to a post-and-beam frame). Timberpeg
`
`knew as well that it had not produced any drawing or plan related
`
`6
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 7 of 17
`
`to a frame design. And Timberpeg knew that VTW designed and
`
`built only a timberframe. And Timberpeg necessarily understood
`
`that its building design could be supported by any number of
`
`frame types and designs. Accordingly, Timberpeg’s copyright
`
`infringement claim consisted, essentially, of an assertion that
`
`its architectural work (the overall house design), embodied
`
`without a frame design, was infringed by VTW’s own timberframe
`
`design, unembellished by other architectural details.
`
`Timberpeg’s theory of infringement ignored the reality that
`
`its frameless architectural work could be supported by a variety
`
`of different frame designs and framing systems.2 It also ignored
`
`the fact that the frame VTW designed and built was capable of
`
`supporting a variety of different architectural designs - any
`
`number of which would be non-infringing with respect to
`
`Timberpeg’s house design. In other words, there was no necessary
`
`infringing correlation between Timberpeg’s architectural work
`
`(the house plans) and VTW’s frame design, just as there is no
`
`2 That Timberpeg’s architectural work could be supported by
`several different frame designs and framing systems is borne out
`by the fact that Timberpeg’s preliminary plans for Isbitski’s
`house called for (but did not depict) a purlin and rafter framing
`system while its construction plans for the same house called for
`(but did not depict) a frame employing a bent system.
`
`7
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 8 of 17
`
`necessary correlation between VTW’s frame design and Timberpeg’s
`
`architectural work.
`
`It was, therefore, objectively unreasonable for Timberpeg to
`
`sue VTW based upon a claim that VTW’s frame constituted an
`
`embodiment of Timberpeg’s house plans. That VTW’s frame could
`
`accommodate Timberpeg’s house design hardly made that frame an
`
`infringing copy of Timberpeg’s house plans. Timberpeg’s legal
`
`theory - that VTW’s frame infringed - was objectively
`
`unreasonable in the context of this case, and amounted to an
`
`attempt by Timberpeg to extend its copyright protection
`
`substantially further than legally permissible. See Matthews v.
`
`Freedman, 157 F.3d 25, 29 (1st Cir. 1998) (affirming district
`
`court’s determination of objective unreasonableness when
`
`plaintiff tried “to extend her copyright protection far beyond
`
`what [was] allowed by law”).
`
`The remaining Fogerty factors also support an award of costs
`
`and fees. Regarding Timberpeg’s motivation, the assertion of an
`
`objectively unreasonable claim goes beyond any legitimate attempt
`
`to clarify or extend the scope of copyright law but, rather,
`
`8
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 9 of 17
`
`suggests “a desire to discourage and financially damage a
`
`competitor by forcing it into costly litigation.” Yankee Candle
`
`Co. v. Bridgewater Candle Co., 140 F. Supp. 2d 111, 116 (D. Mass.
`
`2001) (citing NLFC, Inc. v. Devcom Mid-America, Inc., 916 F.
`
`Supp. 751, 759-60 (N.D. Ill. 1996)).
`
`Timberpeg’s commitment to protecting its intellectual
`
`property through litigation, or the threat of litigation, is
`
`apparently strong, as it should be. But this case crosses the
`
`line between vigorous protection and unwarranted intimidation.
`
`An award of costs and fees will serve the important purpose of
`
`deterring Timberpeg and others from the kind of imaginative
`
`overreaching represented by the legal theory it attempted to
`
`force upon the unsuitable facts of this case.
`
`VTW has demonstrated its entitlement to costs and attorneys’
`
`fees under 17 U.S.C. § 505. Accordingly, its motion for costs
`
`and fees (document no. 100) is granted. All that remains is to
`
`determine the amount.
`
`9
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 10 of 17
`
`VTW initially requested an award of $118,631.933 and has
`
`since requested an additional $1,840, representing fees generated
`
`by its review of and reply to Timberpeg’s objection to its fee
`
`request. Timberpeg counters that the amount requested by VTW is
`
`unreasonable, and seeks several specific reductions, each of
`
`which is addressed below.
`
`Under the fee-shifting provisions of the Copyright Act, as
`
`“[u]nder most federal fee-shifting statutes . . . the trial judge
`
`must determine ‘the number of hours reasonably expended on the
`
`litigation multiplied by a reasonable hourly rate.’” Gay Officers
`
`Action League v. Puerto Rico, 247 F.3d 288, 295 (1st Cir. 2001)
`
`(quoting Hensley v. Eckerhart, 461 U.S. 424, 433 (1983)). “In
`
`implementing this lodestar approach, the judge calculates the
`
`time counsel spent on the case, subtracts duplicative,
`
`unproductive, or excessive hours, and then applies prevailing
`
`rates in the community (taking into account the qualifications,
`
`experience, and specialized competence of the attorneys
`
`involved).” Gay Officers, 247 F.3d at 295 (citing Lipsett v.
`
`3 This figure includes $772.50 in billings from two previous
`attorneys, plus 553 hours of Attorney Whittington’s time, billed
`at $200 per hour, and 56 hours of Attorney Whittington’s
`paralegal’s time, billed at $85 per hour.
`
`10
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 11 of 17
`
`Blanco, 975 F.2d 934, 937 (1st Cir. 1992); United States v.
`
`Metro. Dist. Comm’n, 847 F.2d 12, 15-17 (1st Cir. 1988);
`
`Grendel’s Den, Inc. v. Larkin, 749 F.2d 945, 950-51 (1st Cir.
`
`1984)).
`
`Timberpeg correctly points out that VTW has not offered
`
`affidavits or other evidence supporting the reasonableness of
`
`Attorney Whittington’s hourly rate of $200. But based upon the
`
`court’s knowledge of legal practice in New Hampshire, $200 per
`
`hour falls comfortably within the range of reasonable billing
`
`rates for practitioners of Attorney Whittington’s level of
`
`experience and ability.
`
`Timberpeg argues that $53,837 should be deducted from VTW’s
`
`award, to prevent VTW from realizing a windfall. Timberpeg
`
`points to the fee arrangement between VTW and Whittington, and
`
`suggests that the actual fee charged will be less than that
`
`claimed in the fee petition. But unlike the fee agreement in
`
`Jewish Employment & Vocational Service, Inc. v. Pleasantville
`
`Educational Supply Corp., 601 F. Supp. 224 (E.D. Pa. 1983), under
`
`which the attorney charged half his usual fee but promised to
`
`11
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 12 of 17
`
`pursue full reimbursement and allow the client to pocket the
`
`difference, the fee agreement between VTW and Attorney
`
`Whittington explicitly precludes any such outcome. All fees
`
`collected by VTW will be paid to Whittington’s firm, at the full
`
`billing rate. That the client might incur a reduced obligation
`
`if full fees are not recovered is a benefit that does not extend
`
`to Timberpeg, nor should it. Accordingly, the requested
`
`reduction, based upon Jewish Employment, is denied.
`
`Timberpeg requests an additional reduction of ten percent,
`
`based upon the alleged lack of detail in Attorney Whittington’s
`
`billing records. This is not a case like Grendel’s Den, where
`
`there was an absence of contemporaneous billing records. 749
`
`F.2d at 951. Nor is it a case like Yankee Candle, in which the
`
`prevailing defendant’s request for fees was reduced by ten
`
`percent primarily because of “the rather substantial amount of
`
`time [the defendant’s] attorneys spent in conferences with each
`
`other.” 140 F. Supp. 2d at 125. Timberpeg has not identified
`
`any specific “excessive hours, duplication of services, [or]
`
`fruitless pursuits,” id. (citation omitted), and it is not
`
`entitled to a ten-percent reduction in fees.
`
`12
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 13 of 17
`
`Timberpeg also argues that VTW’s fee award should be reduced
`
`by $4,640 - the amount billed for VTW’s unsuccessful motion to
`
`dismiss. But that motion, while denied, was neither tangential
`
`nor frivolous. Rather, work on the motion to dismiss, which
`
`focused on the same issues raised in the subsequent motion for
`
`summary judgment, contributed to VTW’s success on that latter
`
`motion and was, therefore, neither fruitless nor unproductive.
`
`Timberpeg also contends that Attorney Whittington spent
`
`excessive time on VTW’s motion for summary judgment and that
`
`VTW’s request for $18,000 in fees for that motion should be
`
`reduced by fifty percent. In Timberpeg’s words, “[t]o a
`
`significant extent, defense counsel billed for his education in
`
`copyright law for which Timberpeg should not be forced to pay.”
`
`Attorney Whittington’s billing records disclose that over the
`
`course of the entire case, the number of hours he and his
`
`paralegal devoted to legal research fell somewhere between 31 and
`
`131. In those billing records, 31 hours are accounted for by
`
`entries listing only research activities, while another 100 hours
`
`are accounted for in listings that include both research and
`
`other activities. Assuming that half the time represented by
`
`13
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 14 of 17
`
`those mixed entries was devoted to research, VTW seeks
`
`reimbursement for approximately 80 hours of research time. That
`
`seems a reasonable amount of time to have devoted to legal
`
`research, over seventeen months, in a case whose complexity
`
`flowed, largely, from Timberpeg’s legal theory.
`
`Timberpeg argues, as well, that VTW’s request for fees
`
`should be reduced by $5,405, the amount Attorney Whittington
`
`billed for representing Kim Hentschel at her deposition. While
`
`Hentschel was no longer a VTW employee at the time of her
`
`deposition, she was employed by VTW at the time Isbitski dealt
`
`with the company, and those dealings were the subject of the
`
`deposition. Attorney Whittington billed VTW, not Hentschel, for
`
`the cost of representing Hentschel at the deposition. But
`
`whether he was, strictly speaking, representing Hentschel, or
`
`attended the deposition on behalf of VTW, or both, the fees would
`
`have been substantially identical. The record suggests that
`
`Whittington’s representation was dual but the fees charged were
`
`not. VTW was properly charged for that time for services
`
`rendered to it.
`
`14
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 15 of 17
`
`Timberpeg also challenges: (1) an invoice dated December 29,
`
`2004, in the amount of $2,250, which VTW subsequently identified
`
`as an expert witness fee; (2) another expert witness fee of
`
`$1,350, on an invoice dated April 12, 2005; and (3) a $229.50
`
`billing for legal research and a memorandum related to VTW’s
`
`inadvertent disclosure of information to Timberpeg during
`
`discovery.
`
`VTW may not recover expert witness fees. “[C]osts that may
`
`be assessed to reimburse a prevailing party [in a copyright
`
`infringement case] for its expert witness fees are limited to the
`
`$40 limit provided for in 28 U.S.C. § 1821(b).” Artisan
`
`Contractors Ass’n of Am., Inc. v. Frontier Ins. Co., 275 F.3d
`
`1038, 1040 (11th Cir. 2001); see also Pinkham v. Camex, Inc., 84
`
`F.3d 292, 295 (8th Cir. 1996) (“we conclude costs under 17 U.S.C.
`
`§ 505 are limited to the costs expressly identified in 28 U.S.C.
`
`§ 1920, and that expert witness fees in excess of the 28 U.S.C. §
`
`1821(b) $40 limit are not recoverable”); Barrera v. Brooklyn
`
`Music, Ltd., 346 F. Supp. 2d 400, 406 (S.D.N.Y. 2004) (“Given
`
`that the authority provided by § 505 of the Copyright Act mirrors
`
`that of 28 U.S.C. § 1920 recovery [of expert witness fees in
`
`15
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 16 of 17
`
`excess of $40] is also barred under the Copyright Act.”); NLFC,
`
`916 F. Supp. at 764 (denying expert witness fees in excess of $40
`
`in copyright infringement case). Accordingly, VTW’s fee request
`
`must be reduced by $3,600, the amount of the expert witness fees.
`
`Finally, regarding the $229.50 billing for research into
`
`remedies for VTW’s inadvertent disclosure of information to
`
`Timberpeg during discovery, it is perhaps more appropriate that
`
`VTW bear that cost. After all, the work was necessary only
`
`because VTW was careless. It is a small amount, but Timberpeg’s
`
`point is well taken. The fee request is reduced by $229.50.
`
`Conclusion
`
`For the reasons given, Attorney Whittington’s hourly rate,
`
`and that of his paralegal, are reasonable. The hours expended on
`
`VTW’s defense against Timberpeg’s claims are also reasonable, for
`
`the following reasons: (1) duplication of effort and excessive
`
`consultation were minimized by Attorney Whittington’s status as a
`
`sole practitioner; (2) the case involved several complicated
`
`discovery disputes; (3) the case was vigorously contested on both
`
`sides; and (4) the stakes were high for VTW due to the company’s
`
`16
`
`
`
`Case 1:03-cv-00462-SM Document 108 Filed 11/08/05 Page 17 of 17
`
`relatively small size and the potentially debilitating effect of
`
`an unfavorable outcome. Because the hourly rates and the number
`
`of hours expended on the defense of this case are both
`
`reasonable, the lodestar figure that results from multiplying the
`
`latter by the former is presumed reasonable. Accordingly, VTW is
`
`entitled to costs and attorneys’ fees in the amount of
`
`$116,642.43. That figure represents VTW’s original request, plus
`
`the cost of litigating the issue of fees ($1,840), minus the non-
`
`recoverable expert witness fees ($3,600), and the fee associated
`
`with the inadvertent disclosure ($229.50).
`
`SO ORDERED.
`
`____________________________
`Steven J. McAuliffe
`Chief Judge
`
`November 8, 2005
`
`cc: W. E. Whittington, IV, Esq.
`Daniel E. Will, Esq.
`
`17