The opinion of the court was delivered by: Sweet, District Judge.
Plaintiff Yurman Design, Inc. ("Yurman") has moved for an award of
attorneys' fees and costs against defendant PAJ, Inc., d/b/a Prime Art &
Jewel ("PAJ") pursuant to the judgment in this action. For the reasons
set forth below, an award of fees in the amount of $221,561.70, less
$10,000 to compensate for the challenged entries, and $22,757.03 in costs
will be granted.
As is often regrettably the case, the sequelae of litigation is as
difficult and painful to all concerned as the action in chief. This is
one such occasion and made more so because counsel for PAJ was retained
only after judgment was rendered on behalf of Yurman. Notwithstanding,
the resolution of the current issue between the parties has been
substantially aided by the skill of all counsel.
After a seven-day jury trial held from October 18 to November 1, 1999,
judgment was entered on June 1, 2000, granting Yurman relief on its
claims for copyright and trade dress infringement against PAJ, all
post-trial motions having been resolved by an Opinion and Order of April
10, 2000. Based upon a finding of willful infringement of Yurman's
copyrighted jewelry designs, the judgment provided for an award of
Yurman's attorneys' fees and costs pursuant to Section 505 of the
Copyright Act, 17 U.S.C. § 505.
Yurman moved for attorneys' fees and costs it incurred in connection
with the prosecution of its copyright claims for the period from November
1, 1998 (the month in which Yurman commenced its investigation of
defendant's infringing activities, resulting in the preparation and
transmittal of a cease and desist letter to defendant on November 8,
1998) to May 30, 2000, in the total amount of $825,430.39, attributing
$742,303.00 to fees and $83,127.39 to costs. Discovery was had in
connection with the application, and the motion was heard and marked
fully submitted on November 20, 2000.
The following facts are found based upon the submissions of the parties
and hard-won familiarity with the litigation. Both sides have submitted
evidence by affidavit and deposition, and neither has requested an
evidentiary hearing. The nature of the factual issues presented are
particularly suited to the resolution as set forth below.
More than 700 billing entries and charges have been submitted in
support of the application, the great majority of which are not
specifically attributable to Yurman's copyright claim. Only 37 billing
entries and charges specifically refer to the copyright claim, and
attribute 12.50 hours to partners, 161.95 to associates and 5.75 hours to
paralegals. According to PAJ's expert, the fees actually billed to Yurman
for entries expressly attributable to the copyright claims are
A number of the billing entries and charges for December 1998 through
January 1999, relate to a declaratory judgment action brought by PAJ in
Texas. According to PAJ, billing attributable to the Texas declaratory
judgment action include: partners, 17.25 hours; associates 65.50 hours
and paralegals 21.50 hours.
In its submission, Yurman asserts that it did not include any fee
specifically attributable to non-copyright claims, and that it attributed
fifty percent of all charges from September 8, 1999 to November 1, 1999,
to the copyright claim, as well as seventy-five percent of all charges
from November 1, 1999 to December 1, 1999. As to costs, all were
attributed to the copyright claim other than costs incurred for purposes
of trial preparation and trial, i.e., for the period September 8, 1999 to
November 1, 1999. For this latter time period, Yurman attributed fifty
percent of its costs to its copyright claim.
Three of the forty-nine findings of fact proposed by Yurman related to
the copyright claim. Four of the PAJ pieces were found to infringe
Yurman's copyrights and trade dress and twenty pieces were found to
infringe the trade dress.
Yurman was billed $1107,808.50 in fees and $113,785.17 in costs which
included the fees and expenses ...