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July 17, 2001


The opinion of the court was delivered by: Shira A. Scheindlin, United States District Judge.


On May 24, 2000, plaintiff Earth Flag Ltd. ("EFL") filed suit against defendants Alamo Flag Company ("Alamo") and eBay, Inc. ("eBay") alleging copyright infringement of EFL's flag bearing a public domain photograph of Earth taken from outer space ("Earth Flag"). Specifically, EFL alleged that Alamo was selling flags that infringed on EFL's copyright in the Earth Flag at its retail stores, and eBay was permitting sellers to place similarly infringing flags on its website. See Amended Complaint ¶¶ 2-3. On May 17, 2001, this Court issued an Opinion and Order granting defendants' motion for summary judgment. See Earth Flag Ltd. v. Alamo Flag Co., No. 00 Civ. 3961, 2001 WL 527429, at *8 (S.D.N.Y. May 17, 2001) ("Opinion"). That decision held that EFL's flag was not sufficiently original to warrant copyright protection. See id. at *4. Specifically, this Court found that EFL's Earth Flag had "no non-trivial, original component that entitle[d] it to copyright protection. . . ." Id. The Court further found, as a separate and distinct basis for granting Alamo summary judgment, that Alamo's flag was not substantially similar to EFL's Earth Flag because the similarities between the two flags concerned only non-copyrightable elements of the Earth Flag. See id. at *8. Having thus prevailed on the merits, defendants now move for an award of attorneys' fees pursuant to 17 U.S.C. § 505 and Federal Rule of Civil Procedure 54(d). For the reasons stated below, defendants' motion for an award of attorneys' fees is granted.


The relevant facts are set forth in detail in the Opinion, familiarity with which is assumed.

II. DISCUSSION A. Legal Standard

The Copyright Act of 1976 (the "Copyright Act"), 17 U.S.C. § 505, provides in relevant part that in any copyright infringement action, the court "may . . . award a reasonable attorney's fee to the prevailing party as part of the costs." The Supreme Court has held that attorney's fees should be equally available to prevailing plaintiffs and prevailing defendants. See Fogerty v. Fantasy, Inc., 510 U.S. 517, 533, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). Attorney's fees should be awarded to the prevailing party, not "as a matter of course," but "only as a matter of the court's discretion." Id. at 533-34, 114 S.Ct. 1023.

In Fogerty, the Supreme Court highlighted a list of non-exclusive factors to guide the district court's exercise of discretion in awarding fees, including "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." Id. at 533 n. 19 (quoting Lieb v. Topstone Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)). However, "such factors may be used only `so long as [they] are faithful to the purposes of the Copyright Act.'" Matthew Bender & Co., Inc., v. West Publ'g Co., Nos. 00 Civ. 7070, 00 Civ. 7029, 2001 WL 50857, at *4 (2d Cir. Jan. 23, 2001) (quoting Fogert, 510 U.S. at 534). 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." Fogerty, 510 U.S. at 524. This objective is promoted by discouraging infringement as well as by the successful defense of copyright infringement actions. See id. at 526.

The Second Circuit has held that, of the factors enumerated by the Supreme Court, "objective unreasonableness" should be accorded "substantial weight." Matthew Bender, 2001 WL 50857, at *4. Several courts in this Circuit have awarded attorneys' fees to prevailing defendants solely upon a showing that the plaintiff's position was objectively unreasonable, even without a showing of bad faith or frivolousness. See Adsani v. Miller, No. 94 Civ. 9131, 1996 WL 531858, at *13 (S.D.N.Y. Sept. 19, 1996) (collecting cases holding that objective unreasonableness is sufficient to support a fee award); Littel v. Twentieth Century Fox Film Corp., No. 89 Civ. 8526, 1996 WL 18819, at *3-4 (S.D.N.Y. Jan. 18, 1996) (awarding prevailing defendants attorney's fees based on objective unreasonableness of plaintiffs' claims); Screenlife Establishment v. Tower Video, Inc., 868 F. Supp. 47, 52 (S.D.N.Y. 1994) (same). However, the mere fact that a defendant obtains summary judgment does not necessarily mean that the plaintiff's position was frivolous or objectively unreasonable. See Littel, 1996 WL 18819, at *3. "To hold otherwise would establish a per se entitlement to attorney's fees whenever [a summary judgment motion is] resolved against a copyright plaintiff." CK Company v. Burger King Corp., No. 92 Civ. 1488, 1995 WL 29488, at *1 (S.D.N.Y. Jan. 26, 1995).

The emphasis on objective unreasonableness is firmly rooted in the admonition that an award of attorneys' fees must comport with the purposes of the Copyright Act. "As such, the imposition of a fee award against a . . . [party] with an objectively reasonable litigation position will generally not promote the purposes of the Copyright Act." Matthew Bender, 2001 WL 50857, at *5. Indeed, a court should not award attorneys' fees where the case is novel or close because such a litigation clarifies the boundaries of copyright law. See Lotus Dev. Corp. v. Borland Int'l, Inc., 140 F.3d 70, 75 (1st Cir. 1998) ("When close infringement cases are litigated, copyright law benefits from the resulting clarification of the doctrine's boundaries. But because novel cases require a plaintiff to sue in the first place, the need to encourage meritorious defenses is a factor that a district court may balance against the potentially chilling effect of imposing a large fee award on a plaintiff, who, in a particular case, may have advanced a reasonable, albeit unsuccessful, claim."); see also Fogerty, 510 U.S. at 527 ("Because copyright law ultimately serves the purposes of enriching the general public through access to creative works, it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible.").

1. Objective Unreasonableness

Here, the question of whether EFL's claims against defendants were objectively unreasonable is not a close one. In a suit for copyright infringement, a plaintiff must establish that: (1) it owns a valid copyright in an original work; and (2) the defendants copied original constituent elements of the work. See Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Matthew Bender & Co. v. West Publ'g Co., 158 F.3d 674, 679 (2d Cir. 1998), cert. denied sub nom West Publ'g Co. v. HyperLaw, Inc., 526 U.S. 1154 (1999). A plaintiff may prove the second element circumstantially by showing that: (1) the defendants had access to the copyrighted work; and (2) that the allegedly infringing material is "substantially similar" to copyrightable elements of plaintiff's work. Arica Inst., Inc. v. Palmer, 970 F.2d 1067, 1072 (2d Cir. 1992).

No amount of copying will constitute infringement where a defendant copies only the trivial or non-original contributions of a plaintiff's work. See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980). This is consistent with the broader understanding that "[t]he sine qua non of copyright is originality." Feist Publications, 499 U.S. at 345. While the standard of originality is low, it is well established that a work must possess more than a de minimus amount of creativity. See id. at 345, 362.

As to the first element of a successful copyright infringement suit, EFL was objectively unreasonable in its position that the Earth Flag was sufficiently original to warrant copyright protection. As stated in the Opinion, the Earth Flag "is nothing more than a public domain photograph transferred from the medium of paper to the medium of fabric." Opinion at *4. Such reproduction in a new medium, adding only mechanical skill and de minimus artistic vision, was squarely rejected as protectable by the Second Circuit. See L. Batlin & Son, Inc. v. Snyderl, 536 F.2d 486, 491 (2d Cir. 1976) (rejecting a similar claim that reproducing a plastic version of a cast iron "Uncle Sam" toy coin bank in the public domain is sufficiently original to support a copyright). Indeed, Professor Nimmer suggests that a contrary rule would lead to "the ludicrous result that the first person to execute a public domain work of art in a different medium thereafter obtains a monopoly on such work in such medium, at least as to those persons aware of the first such effort." M. Nimmer, The Law of Copyright § 20.2, at 94 (1975). Even if pursued in subjective good faith, the notion that EFL could maintain copyright protection for its Earth Flag was unreasonable by any standard. EFL's Earth Flag lacks even the modicum of originality and creativity necessary for copyright protection.*fn1

In an attempt to overcome the glaring lack of originality in the Earth Flag, EFL argued that "sweat of the brow" should be a factor in considering originality, an argument that was squarely rejected by the Supreme Court in Feist.*fn2 See Feist, 499 U.S. at 359-60 (holding that Congress's 1976 revisions to the Copyright Act left "no doubt that originality, not `sweat of the brow,' is the touchstone of copyright protection. . . ."). EFL failed to demonstrate any original elements of the Earth Flag and sought to use "sweat of the brow" as the only factor warranting ...

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