FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`GLACIER FILMS (USA), INC.;
`GLACIER FILMS 1, LLC,
`Plaintiffs-Appellants,
`
`
`
`v.
`
` No. 16-35688
`
`D.C. No.
`3:15-cv-01817-
`SB
`
`
`OPINION
`
`
`ANDREY TURCHIN, FKA Doe-
`73.164.151.227,
`Defendant-Appellee.
`
`
`
`
`Appeal from the United States District Court
`for the District of Oregon
`Stacie F. Beckerman, Magistrate Judge, Presiding
`
`Argued and Submitted May 15, 2018
`Portland, Oregon
`
`Filed July 24, 2018
`
`Before: M. Margaret McKeown and Richard A. Paez,
`Circuit Judges, and Cynthia A. Bashant,* District Judge.
`
`Opinion by Judge McKeown
`
`
`* The Honorable Cynthia A. Bashant, United States District Judge
`for the Southern District of California, sitting by designation.
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`
`GLACIER FILMS (USA), INC.;
`GLACIER FILMS 1, LLC,
`Plaintiffs-Appellants,
`
`
`
`v.
`
` No. 16-35688
`
`D.C. No.
`3:15-cv-01817-
`SB
`
`
`OPINION
`
`
`ANDREY TURCHIN, FKA Doe-
`73.164.151.227,
`Defendant-Appellee.
`
`
`
`
`Appeal from the United States District Court
`for the District of Oregon
`Stacie F. Beckerman, Magistrate Judge, Presiding
`
`Argued and Submitted May 15, 2018
`Portland, Oregon
`
`Filed July 24, 2018
`
`Before: M. Margaret McKeown and Richard A. Paez,
`Circuit Judges, and Cynthia A. Bashant,* District Judge.
`
`Opinion by Judge McKeown
`
`
`* The Honorable Cynthia A. Bashant, United States District Judge
`for the Southern District of California, sitting by designation.
`
`
`
`2
`
`
`
`
`
`GLACIER FILMS V. TURCHIN
`
`SUMMARY**
`
`Copyright Act / Attorney’s Fees
`
`The panel reversed the district court’s order denying
`plaintiff’s motion for attorney’s fees in a copyright
`infringement suit.
`
`A film production company sued a user of BitTorrent, a
`peer-to-peer network, who
`illegally downloaded and
`repeatedly distributed a movie. Per the parties’ agreement
`in a stipulated consent judgment, the defendant stipulated to
`liability and to statutory damages, and the district court
`entered a permanent injunction against him.
`
`The panel held that the district court abused its discretion
`by focusing on its generally unfavorable view of other
`BitTorrent litigation and failing to faithfully apply the
`“Fogerty factors” in deciding whether to award attorney’s
`fees under 17 U.S.C. § 505. The panel remanded the case to
`the district court.
`
`
`
`COUNSEL
`
`
`John Mansfield (argued), Harris Bricken, Portland, Oregon;
`Carl D. Crowell, Crowell Law, Salem, Oregon; for
`Plaintiffs-Appellants.
`
`
`
`** This summary constitutes no part of the opinion of the court. It
`has been prepared by court staff for the convenience of the reader.
`
`
`
`GLACIER FILMS V. TURCHIN
`
`3
`
`
`
`Klaus H. Hamm (argued), Klarquist Sparkman LLP,
`Portland, Oregon; David H. Madden, Mersenne Law,
`Tigard, Oregon; for Defendant-Appellee.
`
`
`
`OPINION
`
`McKEOWN, Circuit Judge:
`
`This appeal stems from one of the many copyright
`infringement
`lawsuits
`filed against
`individuals who
`unlawfully download and distribute movies online. As
`digital pirates increasingly use BitTorrent and other peer-to-
`peer networks to share media, copyright holders have
`pressed the courts for recourse. These suits are not without
`controversy: many involve “copyright trolls” who buy up
`copyrights to adult films and then sue masses of unknown
`BitTorrent users for illegally downloading pornography.1
`This one is different: a film production company sued a
`single user who illegally downloaded and distributed
`repeatedly American Heist, a Hollywood action movie.
`
`An important remedy under the Copyright Act provides
`that courts “may” award attorney’s fees to a prevailing party
`in an infringement action. In Fogerty v. Fantasy, Inc.,
`510 U.S. 517 (1994), the Supreme Court laid out factors to
`guide discretion in whether to award fees. Because the
`district court did not faithfully apply the “Fogerty factors” in
`this meritorious BitTorrent action, we reverse and remand
`
`
`1 See, e.g., AF Holdings, LLC v. Does 1–1058, 752 F.3d 990, 992
`(D.C. Cir. 2014); In re BitTorrent Adult Film Copyright Infringement
`Cases, 296 F.R.D. 80, 82 (E.D.N.Y. 2012).
`
`
`
`GLACIER FILMS V. TURCHIN
`
`4
`
`for consideration of an award of reasonable attorney’s fees.2
`The court’s denial of fees under the present circumstances—
`based on a one-size-fits-all disapproval of other BitTorrent
`suits—requires a remand.
`
`BACKGROUND
`
`For context, we discuss the proliferation of peer-to-peer
`Internet piracy suits before clicking through to the specifics
`of this case.
`
`PEER-TO-PEER INTERNET PIRACY SUITS
`
`involves a “decentralized
`Peer-to-peer networking
`infrastructure whereby each participant in the network . . .
`acts as both a supplier and consumer of information
`resources.” Columbia Pictures Indus., Inc. v. Fung,
`710 F.3d 1020, 1024 (9th Cir. 2013). In other words, “peers”
`download content from fellow peers, while leaving their own
`folders of digital content available for others to download.
`One type of peer-to-peer networking involves the BitTorrent
`protocol, in which a file is broken up into smaller pieces
`from various peers and then reassembled upon completion
`of a download. See AF Holdings, 752 F.3d at 998. With
`BitTorrent, “each user is both downloading and uploading
`several different pieces of a file from and to multiple other
`users.” Fung, 710 F.3d at 1027. Peer-to-peer networks like
`BitTorrent are “ideally suited for sharing large files, a feature
`that has led to their adoption by, among others, those
`wanting access to pirated media, including music, movies,
`
`2 The parties consented to a magistrate judge for all district court
`proceedings, including the entry of final orders. Hence, we review
`directly the magistrate judge’s order denying fees. We refer to the
`magistrate judge as “the district court” or “the court” throughout the
`opinion.
`
`
`
`GLACIER FILMS V. TURCHIN
`
`
`
`and television shows.” Id. at 1025; see also Metro-Goldwyn-
`Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 919–20
`(2005).
`
`5
`
`Digital piracy of copyrighted materials on peer-to-peer
`networks can have severe financial consequences for
`copyright holders. As one member of Congress put it:
`
`Under U.S. law, stealing intellectual property
`is just that—stealing. It hurts artists, the
`music industry, the movie industry, and
`others involved in creative work. And it is
`unfortunate that the software being used—
`called “file sharing,” as if it were simply
`enabling friends to share recipes, is helping
`create a generation of Americans who don’t
`see the harm.
`
`Privacy and Piracy: the Paradox of Illegal File Sharing on
`Peer-To-Peer Networks and the Impact of Technology on the
`Entertainment Industry: Hearing Before the S. Comm. on
`Governmental Affairs, 108th Cong. 10–14 (2003) (statement
`of Sen. Levin); see also id. at 1–2 (statement of Sen. Boxer)
`(asserting that “downloading copyrighted works is theft” and
`“is a real problem”).
`
`To combat losses from peer-to-peer file sharing,
`copyright holders have filed a spate of lawsuits against
`infringers in federal courts across the country. See, e.g.,
`BMG Rights Mgmt. (US) LLC v. Cox Commc’ns, Inc.,
`881 F.3d 293, 298–99 (4th Cir. 2018); Killer Joe Nevada,
`LLC v. Does 1–20, 807 F.3d 908, 910 (8th Cir. 2015); Dallas
`Buyers Club, LLC v. Madsen, No. C14-1153RAJ, 2015 WL
`6680260, at *1 (W.D. Wash. Nov. 2, 2015) (noting that the
`action is “one of 13 practically identical cases filed” alleging
`
`
`
`GLACIER FILMS V. TURCHIN
`
`6
`
`BitTorrent users’ infringement of the movie Dallas Buyers
`Club).
`
`Facing a “large number of similar peer-to-peer copyright
`infringement cases,” in March 2016 the United States
`District Court for the District of Oregon sought a practical
`solution and established special procedural rules in a “Case
`Management Order.” See U.S. District Court for the District
`of Oregon, Standing Order 2016-8, available at
`https://www.ord.uscourts.gov/index.php/rules-orders-and-
`notices/standing-orders/active-standing-orders#civil-matters
`(last accessed July 11, 2018). Among other things, the Order
`allows copyright holders to seek limited discovery from an
`Internet Service Provider to establish a potential infringer’s
`identity, directs that holders must alert potential defendants
`of the availability of pro bono counsel to defend against
`infringement claims, and limits holders to suing one alleged
`BitTorrent infringer at a time.
`
`GLACIER’S LAWSUIT IN OREGON3
`
`Glacier Films (USA), Inc. and Glacier Films 1, LLC
`(collectively, “Glacier”) hold valid and enforceable
`copyrights in the film American Heist.4 Scheduled for
`widespread theatrical release in January 2015, Heist instead
`leaked prematurely on BitTorrent, where it became a top
`downloaded (i.e., pirated) movie. According to Glacier,
`over 100,000 Internet Protocol (“IP”) addresses illegally
`
`
`3 The parties stipulated to the relevant facts.
`
`4 Glacier Films (USA), Inc. was a producer of American Heist;
`Glacier Films 1, LLC is a movie-production company that holds the
`copyright to the film’s screenplay.
`
`
`
`GLACIER FILMS V. TURCHIN
`
`
`
`downloaded and exchanged the copyrighted film on
`BitTorrent.
`
`7
`
`Tracking one such infringing IP address to Oregon,
`Glacier brought suit in district court against the John Doe
`owner and subpoenaed records from Comcast to ascertain
`the Doe’s identity. Glacier selected that particular IP address
`because the user distributed the film 80 times and was
`associated with over 700 other titles. When records revealed
`Andrey Turchin as the owner of the IP address, Glacier sent
`two letters seeking his participation in determining who
`downloaded the movie. After Turchin proved non-
`responsive, Glacier obtained leave to depose him. At his
`deposition, Turchin admitted to downloading copyrighted
`content with that IP address, right up until the day before his
`deposition.
`
`Glacier amended its complaint to name the avid
`BitTorrent user as the single defendant and sent Turchin a
`letter advising him of the district court’s pro bono program
`so that he could obtain assistance in filing a responsive
`pleading. After nearly three months of attempting to contact
`Turchin, Glacier filed a motion for default. The court
`appointed pro bono counsel, who filed an answer raising
`various affirmative defenses, denying liability, and seeking
`costs and attorney’s fees. On that same day, Turchin
`provided Glacier with a Rule 68 Offer of Judgment in which
`Turchin offered to pay $2,501 to Glacier in exchange for
`Glacier’s agreement that the sum would satisfy all debts and
`obligations related to the suit, including any claim for
`damages, costs and attorney’s fees. A few days later,
`Turchin filed an amended answer removing five of the seven
`affirmative defenses, but continuing to deny liability and
`maintaining his own request for costs and fees.
`
`
`
`8
`
`
`GLACIER FILMS V. TURCHIN
`
`After conferring, the parties reached a stipulated consent
`judgment. Per the agreement, Turchin stipulated to the
`“allegations that give rise to liability for the infringement of
`[Glacier’s] rights” and to $750 in statutory damages. The
`court permanently enjoined Turchin from using the Internet
`to reproduce, copy or publish American Heist, and ordered
`him to immediately delete any unlicensed copies of the
`movie in his possession. The parties agreed that “any award
`of reasonable attorneys fees shall be determined by the
`[c]ourt in accordance with 17 U.S.C. § 505 and pursuant to
`[Federal Rule of Civil Procedure] 54.” Glacier moved for
`costs of $791.70 and attorney’s fees totaling $4,833.35. The
`court awarded costs to Glacier but denied any attorney’s
`fees.
`
`ANALYSIS
`
`The Copyright Act, coupled with extensive precedent
`from both the Supreme Court and our court, lay the
`foundation for our analysis. The statute states simply that
`the district court “may . . . award a reasonable attorney’s fee
`to the prevailing party as part of the costs.” 17 U.S.C. § 505.
`Although the court enjoys “wide latitude to award attorney’s
`fees based on the totality of circumstances in a case,” its
`discretion must remain tethered to judicial guideposts.
`Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985
`(2016).
`
`The Supreme Court in Fogerty provided a nonexclusive
`list of factors for courts to consider in making a fee
`determination:
`“frivolousness, motivation,
`objective
`unreasonableness (both in the factual and in the legal
`components of the case) and the need in particular
`circumstances to advance considerations of compensation
`and deterrence.” 510 U.S. at 534 n.19; see also Kirtsaeng,
`136 S. Ct. at 1985. We have added factors that “may be
`
`
`
`9
`
`GLACIER FILMS V. TURCHIN
`
`
`
`considered” and “need not all be met”: the degree of success
`obtained in the litigation, the purposes of the Copyright Act,
`and “whether the chilling effect of attorney’s fees may be too
`great or impose an inequitable burden on an impecunious
`[litigant].” Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657,
` We recently re-affirmed our
`675 (9th Cir. 2017).
`commitment to these factors, but emphasized that district
`courts
`should “accord
`substantial weight
`to”
`the
`“reasonableness of [the] losing party’s legal and factual
`arguments.” Shame On You Prods., Inc. v. Banks, 893 F.3d
`661, 666 (9th Cir. 2018); see also Kirtsaeng, 136 S. Ct. at
`1989 (giving the factor “significant weight”).
`
`I. THE DISTRICT COURT ABUSED ITS DISCRETION IN
`APPLYING THE FACTORS
`
`Although the court properly cited all of the Supreme
`Court and Ninth Circuit factors, it focused on three—
`“minimal success” in the litigation, the lack of need for
`further deterrence, and the goals of the Copyright Act. The
`court’s analysis was infused with criticism of other
`BitTorrent cases as well as a critique of Glacier’s counsel in
`other file sharing litigation. While we understand that
`prolific BitTorrent litigation has taxed the courts and that the
`District of Oregon has adopted a sensible way to manage its
`dockets, individual cases nonetheless deserve to be judged
`on their own merits and not saddled with a blanket
`indictment against peer-to-peer copyright litigation. The
`sheer volume of suits should not preordain a court’s fee
`determination in any one suit. Nor should an individual
`client, such as Glacier, be penalized for the tactics of its
`counsel in other cases.
`
`For these and the more specific reasons explained below,
`we conclude that the court misapplied the factors on which
`it focused while omitting analysis of other factors that may
`
`
`
`GLACIER FILMS V. TURCHIN
`
`10
`
`the
`fees—including
`toward an award of
`counsel
`unreasonableness of the losing party’s (Turchin’s) conduct.
`
`A. THE DEGREE OF SUCCESS IN THE LITIGATION
`
`The district court noted that Glacier’s suit was “not
`frivolous,” but went on to conclude that its success was
`“minimal.” In fact, Glacier’s infringement suit against
`Turchin was a “total success.” Maljack Prods., Inc. v.
`GoodTimes Home Video Corp., 81 F.3d 881, 890 (9th Cir.
`1996). Glacier alleged that Turchin copied and distributed
`American Heist through a public BitTorrent network without
`Glacier’s permission; Turchin’s actions
`infringed on
`Glacier’s exclusive rights under the Copyright Act; and
`Turchin’s conduct was “willful, intentional, in disregard of
`and indifferent to [Glacier’s] rights with the intent to deprive
`[Glacier] of income and cause [Glacier] harm.” Turchin
`stipulated to those facts giving rise to liability and to $750 in
`statutory damages for violating the Copyright Act.5 Despite
`Glacier’s complete victory, the district court did not weigh
`the degree of success in the litigation in Glacier’s favor;
`instead, the court twisted total triumph into a conclusion that
`“the degree of success in each of these BitTorrent copyright
`cases is minimal.”
`
`The court’s reasons for reaching this unexpected
`outcome lack support in the law and the record. To begin,
`the court observed that “the $750 statutory damage award
`Defendant has agreed to pay is low in relation to the amount
`of attorney fees Plaintiffs have accrued ($4,833.45), to
`
`
`5 The parties contest whether the stipulation encompasses the
`allegation that Turchin infringed Glacier’s copyright willfully. Because
`the underlying facts surrounding Turchin and American Heist are
`undisputed, the answer to that legal question does not affect the outcome.
`
`
`
`11
`
`GLACIER FILMS V. TURCHIN
`
`
`
`achieve that result.” This is a flawed premise that mixes and
`matches actual success with the determination of a
`reasonable fee award. Actual success in an infringement
`action involves establishing the defendant’s liability. See
`Wall Data Inc. v. Los Angeles Cty. Sheriff’s Dep’t, 447 F.3d
`769, 787 (9th Cir. 2006) (affirming an award of fees under
`the appropriate factors and noting that a “plaintiff will
`ordinarily be regarded as the prevailing party if he succeeds
`. . . in establishing the defendant’s liability, even if the
`damages awarded are nominal or nothing”). An award of a
`“reasonable”
`attorney’s
`fee
`requires
`a
`separate
`determination of an amount, which may consider the hours
`worked among other factors. See The Traditional Cat Ass’n,
`Inc. v. Gilbreath, 340 F.3d 829, 832–33 (9th Cir. 2003) (“In
`applying [17 U.S.C. § 505], district courts are charged with
`two tasks: first, deciding whether an award of attorneys’ fees
`is appropriate, and second, calculating the amount of fees to
`be awarded.”).
`
`The court did not cite any precedential authority that a
`small (and agreed upon) amount of statutory damages is a
`reflection of “minimal success.” To the contrary, we have
`expressed concern that a “small award for damages,”
`without fees, may be “insufficient to deter future copyright
`infringements such as the one at issue here.” Magnuson v.
`Video Yesteryear, 85 F.3d 1424, 1432 (9th Cir. 1996); see
`also Wall Data Inc., 447 F.3d at 787.
`
`The Seventh Circuit has gone so far as to announce a
`“presumptive entitlement” to fees for a “prevailing party in
`a copyright case in which the monetary stakes are small.”
`Gonzales v. Transfer Techs., Inc., 301 F.3d 608, 610 (2002)
`(citing Magnuson, 85 F.3d at 1432). We do not adopt such
`a presumption because doing so would collide with Supreme
`Court guidance and is not consistent with the statute. See
`
`
`
`GLACIER FILMS V. TURCHIN
`
`12
`
`Kirtsaeng, 136 S. Ct. at 1988–89 (underscoring that “§ 505
`confers broad discretion on district courts” and rejecting an
`approach that effects a presumption of fees under certain
`circumstances).
` Nevertheless,
`the policy
`rationale
`underlying the presumption—that “willful infringements
`involving small amounts of money” may not be “adequately
`deterred” absent an award of fees—is a principle that bears
`on the calculus of whether to award fees. Gonzales, 301 F.3d
`at 609–10.
`
`As a factual matter, we consider it curious that the
`district court focused on the $750 statutory damages amount.
`In doing so, the district court elided that Turchin offered to
`pay Glacier $2,501 in exchange for Glacier’s agreeing that
`the sum would satisfy all debts and obligations related to
`Glacier’s lawsuit, including any claim for damages, costs
`and attorney’s fees. That Glacier’s counsel rejected the
`$2,501 offer in favor of $750 in stipulated damages and the
`opportunity for costs and fees hardly reveals “minimal
`success” in the litigation; rather, it underscores a belief that
`Glacier had a strong legal case for costs and fees.
`
`Next, the court reasoned that because American Heist
`had been illegally downloaded over 100,000 times and this
`suit yielded an injunction against only one infringer, “that
`result is de minimis in relation to the serious online piracy
`problem Plaintiffs seek to combat.” This conclusion makes
`little sense in light of the district court’s Case Management
`Order, which allows copyright holders to sue only one
`BitTorrent infringer at a time. Under that Order, an
`injunction against one infringer is the best possible result
`Glacier could have achieved in this suit. An assertion that
`“lots of other people are doing it, too” is not a persuasive
`equitable principle and does not counsel toward a denial of
`fees. Instead, we see dissonance between the district court’s
`
`
`
`GLACIER FILMS V. TURCHIN
`
`
`
`citation to the large number of infringers and its conclusion
`that fees are unnecessary as a deterrent.
`
`13
`
`B. DETERRENCE
`
`Overall, the district court did not appropriately weigh the
`interests of deterrence and compensation. See Magnuson,
`85 F.3d at 1432 (“Because it is not apparent from the district
`court’s decision that it considered the factors listed in
`Fogerty, particularly the goal of deterring future copyright
`infringements, we remand for reconsideration of this
`issue.”). The court asserted without support that a “financial
`penalty” of $1,500 (consisting of the costs and the agreed
`statutory damages) “is sufficient to deter [Turchin], as well
`as others, from illegally downloading movies in the future.”
`The record belies this contention.
`
`In fact, Turchin continued to use BitTorrent to pirate
`copyrighted content even after he received notice that he
`might be at risk of legal penalties—right up until the day
`before his deposition. See Kirtsaeng, 136 S. Ct. at 1989
`(noting that a court may order fee-shifting to deter repeated
`instances of infringement). Turchin was “associated with”
`700 pirated titles, an amount that may be worth more in
`economic value than $1,500. An avid BitTorrent user like
`Turchin may rationally decide that the risk of being caught
`and sued for $1,500 is worth the price of admission for
`access to unlimited media.
`
`Further, the district court identified various BitTorrent
`cases with stipulated consent judgments of over $8,000 that
`settled before Turchin continued to download copyrighted
`titles. See, e.g., Cobbler Nevada, LLC v. Reardon, No. 3:15-
`cv-01077-ST, 2015 WL 9239773, at *2 (D. Or. Dec. 16,
`2015). If those larger judgments did not deter Turchin and
`his peers from using BitTorrent, why would a “penalty” a
`
`
`
`GLACIER FILMS V. TURCHIN
`
`14
`
`fraction of that size deter willful infringements in the future?
`The district court’s assertion does not add up.
`
`We recognize that new technologies have strained
`application of certain sections of the Copyright Act, but the
`attorney’s fee provision is not one of them. In fact, in
`recognition of the ubiquity of file sharing and the need to
`enhance deterrence, in 1999, Congress increased available
`statutory damages: raising minimum damages from $500 to
`$750, maximum damages for non-willful infringements
`from $20,000 to $30,000, and maximum damages for willful
`infringements from $100,000 to $150,000. Pub. L. No. 106-
`160, 113 Stat. 1774 (codified at 17 U.S.C. § 504). One need
`look no further than the statutory title to see what Congress
`had in mind: The Digital Theft Deterrence and Copyright
`Damages Improvement Act. As one member of Congress
`stated at the time: “Copyright piracy . . . is flourishing in the
`world. With the advanced technologies available and the
`fact that many computer users are either ignorant of the
`copyright laws or simply believe that they will not be caught
`or punished, the piracy trend will continue” absent increased
`penalties. 145 Cong. Rec. H12884-01 (daily ed. Nov. 18,
`1999) (statement of Rep. Coble). By passing the Deterrence
`Act, “Congress specifically acknowledged that consumer-
`based, noncommercial use of copyrighted materials
`constituted
`actionable
`copyright
`infringement”
`and
`“contemplate[d] that suits like this were within the Act.”
`Sony BMG Music Entm’t v. Tenenbaum, 660 F.3d 487, 500
`(1st Cir. 2011).
`
`In raising the stakes for unlawful digital file-sharing,
`however, Congress left the attorney’s-fees provision intact.
`Given that congressional choice, it is not logical to resolve
`that statutory damages alone sufficiently deter this species of
`copyright infringement—while making fees categorically
`
`
`
`15
`
`GLACIER FILMS V. TURCHIN
`
`
`
`unavailable. If now, almost two decades after the Deterrence
`Act, copyright trolls and mass filings present a further public
`policy issue, then Congress should step in. See Sony Corp.
`of Am. v. Universal City Studios, Inc., 464 U.S. 417, 430–31
`(1984) (“[A]s new developments have occurred in this
`country, it has been the Congress that has fashioned the new
`rules that new technology made necessary.”). Meanwhile,
`we must judge each case on its own merits.
`
`C. THE GOALS OF THE COPYRIGHT ACT
`
`Finally, the district court erred in its assessment of
`whether awarding fees in this case would “further the
`purposes of the [Copyright] Act.” Mattel, Inc v. MGA
`Entm’t, Inc., 705 F.3d 1108, 1111 (9th Cir. 2013). Some of
`our earlier opinions have called this the “most important
`factor” in granting or denying a request for fees. See SOFA
`Entm’t, Inc. v. Dodger Prods., Inc., 709 F.3d 1273, 1280 (9th
`Cir. 2013); Mattel, 705 F.3d at 1111; Fantasy, Inc. v.
`Fogerty, 94 F.3d 553, 558 (9th Cir. 1996). After Kirtsaeng’s
`2016 endorsement of a “totality of circumstances” approach
`and its statement that the losing party’s reasonableness
`carries “significant weight,” it is unclear whether the
`purposes-of-the-Copyright-Act factor remains the “most
`important” one. 136 S. Ct. at 1989. In any event, it is
`sufficient to note that because the guiding principles of the
`Copyright Act run throughout the other factors, it remains
`important.
`
`The goal of the Copyright Act is “to promote creativity
`for the public good.” Jackson v. Axton, 25 F.3d 884, 890
`(9th Cir. 1994); see also Fogerty, 510 U.S. at 524 (“The
`primary objective of the Copyright Act is to encourage the
`production of original
`literary, artistic, and musical
`expression for the good of the public.”). Inherent in the
`Act’s purpose is that “a copyright holder has always had the
`
`
`
`GLACIER FILMS V. TURCHIN
`
`16
`
`legal authority to bring a traditional infringement suit against
`one who wrongfully copies.” Grokster, 545 U.S. at 963. In
`the Internet Age, such suits “have served as a teaching tool,
`making clear that much file sharing, if done without
`permission, is unlawful[,] and apparently have had a real and
`significant deterrent effect.” Id.
`
`This case fits squarely within the tradition of copyright
`enforcement. Turchin’s conduct—pirating and distributing
`dozens of copies of Glacier’s film—does not “promote the
`Progress of Science and useful Arts” by “assur[ing] authors
`the right to their original expression” and “encourag[ing]
`others to build freely upon the ideas and information
`conveyed by a work.” Feist Publ’ns, Inc. v. Rural Tel. Serv.
`Co., 499 U.S. 340, 349–50 (1991). This is not a case of the
`infringer creating something new and incorporating a
`copyrighted element into that new, creative work. See
`Williams v. Gaye, 885 F.3d 1150, 1177 (9th Cir. 2018)
`(affirming the denial of fees in an infringement award
`involving the 2013 Robin Thicke and Pharrell Williams song
`“Blurred Lines” and the 1977 Marvin Gaye song “Got to
`Give It Up”). Rather, this case is the digital equivalent of
`standing outside the neighborhood Redbox—or Blockbuster
`Video, for fans of history—and giving away copies of the
`movie for free. Nevertheless, the district court did not
`analyze whether Turchin’s conduct furthers or frustrates the
`goals of the Copyright Act.
`
`Nor did the district court find that Glacier acted contrary
`to those goals in this particular case. Instead, its decision
`rested on a view that awarding “attorney fees in this case
`would only contribute to the continued overaggressive
`assertion and negotiation of” other copyright claims.
`Apparently, the court saw the fact that Glacier’s counsel had
`filed 300 copyright actions against BitTorrent infringers as
`
`
`
`GLACIER FILMS V. TURCHIN
`
`
`
`an “overaggressive assertion[] of copyright claims,” which
`counseled toward a denial of fees.6
`
`17
`
`The district court initially erred by positing that “[i]n
`Kirtsaeng, the Supreme Court noted that a court may also
`consider the need to ‘deter . . . overaggressive assertions of
`copyright claims’” in denying fees. See 136 S. Ct. at 1989.
`That paraphrasing of the Kirtsaeng decision is inaccurate.
`
`Kirtsaeng actually stated that a district court “may order
`fee-shifting . . . to deter . . . overaggressive assertions of
`copyright claims, again even if the losing position was
`reasonable in a particular case.” 136 S. Ct. at 1988–89
`(emphases added). For example, the Supreme Court cited a
`Sixth Circuit case “awarding fees against a copyright holder
`who filed hundreds of suits on an overbroad legal theory,
`including in a subset of cases in which it was objectively
`reasonable” to do so. Id. at 1989 (citing Bridgeport Music,
`Inc. v. WB Music Corp., 520 F.3d 588, 593–94 (6th Cir.
`2008)). But crucially, Bridgeport Music was a case in which
`the copyright holder lost, even though it asserted some
`objectively reasonable claims. See 520 F.3d at 593. The
`court nonetheless awarded fees to the prevailing alleged
`infringers in an effort to deter the copyright holder from
`over-aggressively filing losing claims. Id. Contrary to the
`district court’s statement, nowhere in Kirtsaeng did the
`Supreme Court promote denying fees in meritorious claims
`because
`those winning
`claims
`are
`somehow
`“overaggressive.” Indeed, it is difficult to see how pursuing
`a meritorious
`infringement claim “less aggressively”
`
`
`6 That Glacier’s counsel filed many actions may be a product of the
`district court’s Case Management Order, which provides that copyright
`holders may name only one potential infringer per BitTorrent suit.
`
`
`
`GLACIER FILMS V. TURCHIN
`
`18
`
`furthers “the Copyright Act’s essential goals.” Kirtsaeng,
`136 S. Ct. at 1989.
`
`The court also based its decision on generalizations
`about other BitTorrent cases, not on the “totality of
`circumstances in [this] case.” Id. at 1985. It is revealing that
`the court observed that another district court had denied fees
`in a “similar BitTorrent copyright case,” despite the fact that
`the other case is quite dissimilar. In Countryman Nevada,
`LLC v. DOE, copyright holders “conducted th[e] litigation
`in a manner calculated to increase the opposing party’s
`costs.” 193 F. Supp. 3d 1174, 1182 (D. Or. 2016). Unlike
`Turchin, the alleged infringer downloaded the movie by
`accident, “promptly conduct[ed] an investigation,” admitted
`liability, and offered to settle without asserting spurious
`defenses. Id. at 1176–77, 1183. The copyright holders
`refused to settle unless the infringer paid $8,500, even after
`the infringer claimed financial hardship. Id. at 1177.
`
`The district court nonetheless lumped the present case
`together with the worst of “these BitTorrent copyright
`cases,” even though it shares none of the unsavory
`characteristics. Here, Glacier did not “demand thousands of
`dollars to settle a claim . . . where the infringing defendant
`admits early in the case that they illegally downloaded the
`movie.” The company did not seek a confidential or
`uncounseled settlement not subject to court approval, or
`“pursue particularly vulnerable individuals.” Nor is Glacier
`a quintessential “copyright troll”—a term defined by the
`district court as an entity “more focused on the business of
`litigation than on selling a product or service or licensing
`their [copyrights] to third parties to sell a product or
`
`
`
`19
`
`GLACIER FILMS V. TURCHIN
`
`
`
`service.”7 Glacier produced American Heist, a Hollywood
`feature film with a substantial budget and a recognizable
`cast, including Hayden Christensen, Adrien Brody, and
`Jordana Brewster. The company prepared the film for
`widespread North American theatrical release. When that
`fell through—in part, Glacier contends, because of illegal
`downloads before the release date—Glacier released the
`movie on DVD and Blu-Ray and licensed the movie for
`legal, commercial download on services such as Amazon.
`Glacier’s production and marketing of artistic content shares
`little resemblance to entities hiding in the shadows, buying
`the copyrights to pornographic films (without creating
`anything), and seeking settlements from crowds of John
`Does embarrassed that they were “caught” downloading
`tawdry titles. See AF Holdings, 752 F.3d at 992–93
`(describing the “modus operandi” of a copyright troll).
`
`UNREASONABLENESS
`D. OBJECTIVE
`FRIVOLOUSNESS
`
`AND
`
`District courts do not
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