United States District Court, S.D. New York
MEMORANDUM OPINION & ORDER
J. NATHAN, District Judge
Court's July 12, 2016 Memorandum and Order granting in
part and denying in part Plaintiffs motion for
reconsideration, the Court called for supplemental briefing
on two issues. First, in light of the Court's decision to
allow reconsideration to account for the relative financial
strength of the parties, the parties were asked to submit
their proposals on the appropriate amount of the fee award.
Dkt. No. 136 at 6. Second, the Court called for additional
briefing on the impact, if any, of the Supreme Court opinion
in Kirtsaeng v. John Wiley & Sons, Inc., which
was issued on the same day in which briefing of the motion
for reconsideration was completed. Id.
Court now addresses these supplemental submissions.
following reasons, the Court enters an adjusted fee award of
Court assumes the parties' familiarity with the facts and
history of this case. For the purposes of the issues
presented by this motion, the following synopsis will
filed this copyright infringement action on May 3, 2012. Dkt.
No. 1. On September 10, 2013, the Court granted
Defendants' motion to dismiss with respect to four of
Plaintiffs six claims. Dkt. No. 43. On March 24, 2015, the
Court granted Defendants' motion for summary judgment on
Plaintiffs remaining claims. Dkt. No. 101. Shortly
thereafter, Defendants Michael Diamond, Adam Horovitz, the
Estate of Adam Yauch, and Brooklyn Dust Music (the
"Beastie Boys Defendants") and Universal-Polygram
International Publishing, Inc. and Capitol Records, LLC (the
"UMG Defendants") moved for attorney's fees and
costs pursuant to Section 505 of the Copyright Act and
Federal Rule of Civil Procedure 54. Dkt. Nos. 103, 106.
March 9, 2016, the Court granted Defendants' motions,
collectively awarding them approximately $845, 000 in total
costs and fees. Dkt. No. 124 at 16. In that opinion, the
Court held that Plaintiffs arguments with respect to standing
were "objectively unreasonable." Id. at
then retained new counsel, who filed a motion for
reconsideration of the Court's grant of attorney's
fees. Dkt. No. 128. Plaintiff made three arguments in support
of its motion for reconsideration. Dkt. No. 136 at 2-6. The
Court was persuaded by one of these arguments -that the Court
should reconsider the amount of its fee award based on
Plaintiffs weak financial position. Id. at 4-6. The
Court concluded that it will "likely adjust
downward" from its previous fee award, id. at 5
(internal quotation marks and edits omitted), and called upon
the parties to attempt to agree on the appropriate fee
awards, or "to submit proposals to the Court on the
appropriate amount of a fee award in light of the Court's
decision to allow reconsideration on this point."
Id. at 6. The parties submitted such proposals, see
Dkt. Nos. 145-46, 150-51, 153, and these proposals are now
before the Court.
on the same day on which the parties concluded briefing
Plaintiffs motion for reconsideration, the Supreme Court
issued its opinion in Kirtsaeng v. John Wiley & Sons,
Inc. 136 S.Ct. 1979 (2016). Because the parties had not
had the opportunity to brief the Court on
Kirtsaeng's effects on the fees and costs award
in this matter, the Court invited additional briefing on that
question. Dkt. No. 136 at 6. The parties filed submissions on
Kirtsaeng's effects, Dkt. Nos. 144, 149, 153,
and this too is presently before the Court.
Reconsideration Based Upon Kirtsaeng
standing to enforce the copyright in question was the central
disputed issue at summary judgment, the stage of this
litigation for which attorney's fees were awarded. Under
the Copyright Act, holders of an exclusive license may sue
for infringement, while holders of a nonexclusive license may
not. 17 U.S.C. § 501(b). It is a well-established
principle of copyright law that a "co-owner cannot
unilaterally grant an exclusive license, " Davis v.
Blige, 505 F.3d 90, 101 (2d Cir. 2007) (citation
omitted), while an agreement that "transfers nothing
more than a bare right to sue.. .cannot be the basis for
standing under the Copyright Act." John Wiley &
Sons, Inc. v. DRK Photo, 998 F.Supp.2d 262, 280-81
(S.D.N.Y. 2014) (internal quotation marks and citation
omitted), appeal docketed, No. 15-1134 (2d Cir. Apr.
9, 2015). The Court granted summary judgment to Defendants
based on Plaintiffs lack of standing, noting that one
co-owner of the copyright was not a signatory to the
agreement purporting to convey an exclusive license to
Plaintiff. Dkt. No. 101 at 7. Rather, Plaintiff had a
"bare right to sue" from that third co-owner, Dr.
James Avery, thus vitiating an exclusive license and, in
turn, Plaintiffs standing. Id. at 9-10.
Court found that Plaintiff acted unreasonably in bringing
suit given that the "clear and unambiguous intent"
of this third co-owner "to assign the bare right to sue
permeates nearly every provision of the agreement."
Id. at 9. In light of the well-established principle
that a "right to sue" cannot be the basis for
standing, the Court concluded that these apparent
deficiencies rendered Plaintiffs claim "clearly without
merit" and "objectively unreasonable." Dkt.
No. 124 at 5 (quoting Silberstein v. FoxEntm 't ...