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Silverstein v. Penguin Putnam

March 12, 2008

STUART Y. SILVERSTEIN, PLAINTIFF,
v.
PENGUIN PUTNAM, INC., DEFENDANT.



The opinion of the court was delivered by: John F. Keenan, United States District Judge

Before the Court is Defendant Penguin Putnam, Inc.'s application for attorneys' fees and costs pursuant to § 505 of the Copyright Act, 17 U.S.C. § 505, and for attorneys' fees pursuant to § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a). For the reasons discussed below, the motion is DENIED.

Opinion and Order

Background

More than seven years ago, Stuart Y. Silverstein ("Silverstein") commenced this action against Penguin Putnam, Inc. ("Penguin"), claiming that he owned a compilation copyright in Not Much Fun: The Lost Poems of Dorothy Parker (Scribner 1996)("Not Much Fun"), a collection of Dorothy Parker's previously uncollected poems, and that Penguin infringed this copyright by photocopying these poems from his book and reproducing them in a chapter of Penguin's book, Dorothy Parker: Complete Poems (Penguin Books 1999) ("Complete Poems"). Silverstein also asserted claims of "reverse passing off" under the Lanham Act and unfair competition and immoral trade practices under New York state law.

On April 4, 2003, this Court entered summary judgment for Silverstein and enjoined Penguin from selling or further distributing Complete Poems. Silverstein v. Penguin Putnam, Inc., No. 01 CV 309, 2003 WL 1797848 (S.D.N.Y. Apr. 4, 2003), vacated, 368 F.3d 77 (2d Cir. 2004). The Court found that Not Much Fun was entitled to copyright protection based upon creativity in its selection, arrangement and coordination of poems, and that Penguin violated this copyright. Id. at **4-7. The Court also awarded summary judgment to Silverstein on his Lanham Act and state law claims. Id. at **7-8.

Penguin appealed, and, on May 7, 2004, the Court of Appeals for the Second Circuit reversed the award of summary judgment on the copyright claim insofar as it was based on Not Much Fun's arrangement of poems and the edits that Silverstein made and the titles he gave to some of the poems. Silverstein v. Penguin Putnam, Inc., 368 F.3d 77, 78, 83 (2d Cir. 2004). The Second Circuit also vacated the judgment that Silverstein's selection of poems was protectible, finding that issues of material fact existed as to whether Silverstein's decisions to include or exclude certain Parker works demonstrated creative judgment and, if so, whether such creativity was sufficient for copyright protection to attach. Id. at 81-83. The Second Circuit remanded the case for resolution of these factual issues.

After the remand, the parties renewed cross-motions for summary judgment. The Court denied these motions on May 3, 2006, finding that issues of material factual existed for trial. Silverstein v. Penguin Putnam, Inc., No. 01 CV 309, 2006 WL 1192769 (S.D.N.Y. May 3, 2006).

This case was tried without a jury from July 17, 2007 through July 25, 2007. On November 7, 2007, the Court issued a written decision in favor of Penguin on the copyright infringement, Lanham Act, and state law claims, see Silverstein v. Penguin Putnam, Inc., 522 F. Supp. 2d 579 (S.D.N.Y. 2007), familiarity with which is presumed.

The matter was vigorously, forcefully and animatedly litigated at all stages of the proceedings.

Discussion

Penguin seeks the attorney's fees and costs that it incurred in this action since the Second Circuit's May 2004 remand pursuant to § 505 of the Copyright Act, 17 U.S.C. § 505, and § 35(a) of the Lanham Act, 15 U.S.C. § 1117(a). Penguin estimates such fees at $877,357.00 and costs at $21,290.58, plus its fees and costs associated with making the instant motion.

A. Award of Fees under § 505 of the Copyright Act

Under Section 505 of the Copyright Act, this 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." 17 U.S.C. § 505. An award of attorneys' fees is at the discretion of the district court, and prevailing defendants and plaintiffs are to be treated alike. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994).

The ultimate question is whether an award of costs and fees would further the policies of the Copyright Act. See Matthew Bender & Co. v. West Publ'g Co., 240 F.3d 116, 122 (2d Cir. 2001). Although there is no precise formula to this determination, courts exercising their discretion are guided by the non-exclusive factors of "'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 ...


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