Staying Litigation Because of Request for Inter Partes Review?

Not yet.  The request is premature until the Patent Office determines whether or not to institute the Inter Partes Review ("IPR").

TAS Energy, Inc. sued Stellar Energy Americas, Inc. for patent infringement concerning U.S. RE 44,815.  TAS and Stellar are competing engineering firms that each sought to design and construct a gas turbine inlet air cooling and thermal energy storage system for Duke Energy.  TAS additionally sought a preliminary injunction to enjoin Stellar's activities, but that motion was denied.  Stellar next petitioned the U.S. Patent and Trademark Office for IPR, seeking to invalidate claims of the '815 patent.

As has become common practice, Stellar also asked the district court to stay the litigation based on Stellar's request for review.  TAS responded that the request for a stay was premature because the Patent Office had not yet decided whether or not to grant the petition.

The Court resolved the issue quickly:

Stellar argues that there is a substantial likelihood that the PTO will institute review of the patent-in suit because it already instituted review of the parents of the patent-in-suit in prior inter partes review proceedings. Stellar also argues that TAS Energy will not be unduly prejudiced because its motion for preliminary injunction was denied, which Stellar argues raises a substantial question as to the validity of the patent-in-suit. Stellar further argues that the PTO grants a majority of the petitions filed and it is likely to resolve the question regarding the validity of the patent-in-suit, which would minimize duplicative efforts and may streamline the district court’s litigation. It further argues that the stay would be “brief.”

TAS Energy opposes Stellar’s Motion and argues that this Court should deny the motion for three reasons: Stellar’s motion is premature; Stellar exaggerates the possibility that its IPR petitions—if instituted at all—will simplify this litigation; and Stellar ignores the prejudice that TAS Energy will suffer as a result of a stay. It argues that the majority of the courts in the Middle District of Florida deny motions for stay when the PTO has not yet granted a movant’s petition for inter partes review and no circumstances in this case justify a departure from that trend. Further, TAS Energy states that Stellar’s petitions challenge different claims of the ‘815 patent, and each petition challenged less than half of the ‘815 patent’s claim; therefore, the review would not simplify the issues in this case because it will not finally resolve all issues in the litigation. It further argues that when the parties are direct competitors the risk of prejudice in delaying a patent infringement suit is high, which courts in this district recognize as a basis to deny a stay.

The Court concludes that granting a stay at this stage of the inter partes review process is premature. Therefore, the Court denies the Motion without prejudice to Stellar to raise the issue if and when the PTO grants its petitions. Accord CANVS Corp. v. FLIR Sys., Inc.,2:14-CV-180-FTM-38CM, 2014 WL 6883127, at *1 (M.D. Fla. Dec. 5, 2014) (referencing defendant’s previous motion for stay which the court denied as premature without prejudice to re-file if and when the PTO granted inter partes review). See also Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., No. 6:12-cv-1727-Orl-37DAB,2013 WL 1969247, at *3 (M.D. Fla. May 13, 2013) (“it seems clear that a stay of a patent infringement action is not warranted when based on nothing more than the fact that a petition for inter partes review was filed in the USPTO.”); U.S. Nutraceuticals, LLC [v. Cyanotech Corp.], 2013 WL 6050744, at *3 (explaining since it remained uncertain as to whether the petition for inter partes review would be granted, a stay would prejudice the plaintiff’s ability to prosecute its claims and present a clear tactical advantage to the defendants).

[EDITOR'S NOTE: This is a very disturbing and troubling trend to me, and it appears to me that the Middle District of Florida is handling it correctly.  Issued patents are presumed valid, and the owner of the patent is charged with policing his or her rights.  That policing is in the form of a patent infringement litigation to stop the alleged infringer from violating the patent owner's presumed-valid rights.   Congress, perceiving there is a larger problem with patent infringement activity than actually exists, created a framework for attacking the validity of patents at the Patent Office.  Under this framework, if the Patent Office agrees to analyze the validity of the patent, a Court should stay the litigation under most circumstances.  But numerous (hundreds?  more?) defendants have asked district courts to stay litigations on the basis of their requests for review alone.  These defendants usually combine their requests for a stay with outright refusals to cooperate in the litigation, forcing the plaintiff to engage in additional motion practice to compel compliance with the rules of civil procedure.  In essence, the presumption of validity has disappeared and the already daunting task of enforcing Constitutionally created property rights is even harder.  It's worthwhile to remember we are an innovation economy and patents have historically been a strong vessel for protecting and valuing that innovation.  Time will tell whether balance will return to the patent system or not.]

Motion to stay, denied as premature.
TAS Energy, Inc. v. Stellar Energy Americas, Inc., Case No. 8:14-CV-3145 (M.D. Fla. Apr. 2, 2015) (J. Moody)

Request for Directed Verdict -- Is "Pods" Generic?

No.

A jury agreed with PODS that U-Haul infringed the "pods" trademark and that U-Haul was unable to prove that the mark was generic.  U-Haul asked for a directed verdict notwithstanding the jury's conclusion and separately asked for a new trial.

The Court noted the narrow lens through which a Rule 50 directed verdict motion is viewed:

A Rule 50 motion should be granted only if the evidence is so overwhelmingly in favor of the moving party that a reasonable jury could not arrive at a contrary result.

(quote omitted).  U-Haul argued that it had presented significant evidence including expert testimony, dictionary definitions, patents, media usage, military usage, industry usage, and PODS' own usage to show that the term "pods" was generic at the time of its trademark registration.  The Court first laid out the test for genericness:

The Lanham Act has codified the test for genericness: the primary significance of the mark to the relevant public.15 U.S.C. § 1064(3); Miller's Ale House, Inc. v. Boynton Carolina Ale House, LLC, 702 F.3d 1312, 1320 (11th Cir. 2012).  The term is generic if the primary significance of the mark is "the term by which the product or service itself is commonly known," a depiction of the product as a whole, rather than a particular feature of the product, or the name of a class of products rather than an individual brand.  Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007) (citations omitted).  The First Circuit has explained: "Rather than answering the question "where do you come from?", a generic term merely explains "what are you?" Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 14 (1st Cir. 2008) (citations omitted).  Genericness is based on the use of a word in its relevant context, not the word itself.  "'[I]vory' is generic of elephant tusks but arbitrary as applied to soap."  Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183, 1186 (5th Cir. 1980).

The Court then turned to U-Haul's evidence.  The bulk of U-Haul's evidence appeared related to the use of the term "pod" in the aerospace industry (i.e. NASA definitions defining pod as a "streamlined compartment under the wings or fuselage of an airplane used as a container (as for fuel).")  While noting that U-Haul presented a significant amount of evidence, the Court recognized that the jury was entitled to give that evidence whatever weight the jury found appropriate:

The Court's inquiry on a Rule 50 motion based on the sufficiency of evidence is limited to determining "if the evidence is so overwhelmingly in favor of the moving party tht a reasonable jury could not arrive at a contrary verdict." Middlebrooks v. Hillcrest Foods, Inc., 256 F.3d 1241, 1246 (11th Cir. 2007).   It is the jury's role, not the court's, to make credibility determinations and weigh the evidence. Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 150–151 (2000). As outlined above, U–Haul presented a significant amount of evidence relevant to its affirmative defense of genericness. However, a careful review of the evidence, in light of the relevant legal standards and the jury's role as finder of fact and appraiser of credibility, leads to the conclusion that there is sufficient evidence to support the jury's verdict. See Chambless v.. Louisiana–Pac. Corp.,481 F.3d 1345, 1348 (11th Cir.2007) (denying Rule 50 motion brought by party who bore the burden of proof, where the movant made a prima facie case but there was sufficient evidence to support the jury's verdict); Collado v. UnitedParcel Service, Co., 419 F.3d 1143, 1154 (11th Cir.2005). U– Haul's remaining arguments for overturning the jury's verdict are similarly unavailing.

U-Haul's motion for a new trial failed for the same reasons.

Motion for directed verdict, or alternatively for a new trial, denied.

Pods Enterprises, Inc. v. U-Haul Intern., Inc., Case No. 8:12-cv-1479 (M.D. Fla. Mar. 11, 2015) (J. Whittemore)

The Infringer Sourced The Infringing Goods in China, So Infringement Was Willful, Right?

No.

Washington Shoe Company ("WSC") has sold certain shoes in Target.  (There is debate through the opinion discussed below whether WSC sold its shoes through Target "for years," but I will not get into that factual dispute.)  WSC sent an initial demand letter to Olem Shoe Corp. concerning the below boots:

Olem responded that it was investigating the claim, but WSC had not identified any copyright registrations.  WSC responded with registration information, but the Copyright Office was unable to locate the deposit copies corresponding to the boots.  WSC then filed supplementary registrations to address certain issues.

WSC obtained summary judgment that Olem had infringed, but the district court refused to find the infringement willful.  WSC appealed.  Olem cross-appealed the infringement finding.

Willfulness

Concerning willfulness, WSC argued that it was entitled to a jury determination as to whether or not Olem's infringement was willful.  WSC argued the following facts inferred willfulness:

• Cease and desist letters;
• "Striking similarity" of the infringing boots
• Olem's sourcing of the boots from China because "it is ... well known that China is a source of infringing goods"
• Olem's inability to point to any other works on which its shoes were based

Neither the district court nor the Eleventh Circuit were convinced.  As to the letters, the Court noted that Olem undertook a serious investigation, and identified issues with WSC's copyright registrations, which required WSC to file supplementary registrations.  As to the similarity of the boots, the court noted that "striking similarity" is a standard for finding infringement, but that did not mean Olem had the necessary state of mind to support a finding of willfulness:

[WSC]'s asserting that the similarity of Olem's boot designs to those of [WSC] "makes it more likely that the work was copied" is, of course true.  [WSC] has indicated no authority, however, that supports its argument that the similarity of the designs is evidence that the copying was willful.  Generally, establishing a reckless state of mind in a copyright case requires a showing that the infringer possessed particular knowledge from which willfulness could be inferred, such as evidence demonstrating that the infringer was given samples of the copyrighted work prior to producing the infringing work.  See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 112, 113 (2d Cir. 2001) [parenthetical omitted]

As to sourcing the infringing boots in China, the Eleventh Circuit appeared hesitant to follow such an approach:

Although [WSC] notes that Olem did not design its boots and purchased them from China, it does not point to any record evidence to substantiate its claim that these facts "increase[] the probability of infringement" such that a jury could infer that Olem acted recklessly.  This argument, if effective, would impute reckless disregard to any company purchasing and selling products from China that it did not design itself that turned out to be copyrighted by another.  Thus, it is unpersuasive.

The Court was also not persuaded by WSC's argument attempting to attribute a reckless state of mind to Olem for its inability to point to other works on which the boots were based.

Cross-Appeal - Finding of Infringement

Olem's cross appeal attempted to negate the infringement finding based in part on challenging WSC's evidence suggesting broader access to WSC's boots based on purported misrepresentations.  The Court analyzed the WSC boots and Olem boots and concluded the Olem boots were "strikingly similar" to WSC's.  As such, the infringement finding stands.

Olem Shoe Corp. v. Washington Shoe Corp., Case Nos. 12-11227, 12-11356 (11th Cir. Jan. 12, 2015)

Patent Eligibility Attack On the Pleadings?

Not where you need to rely on evidence outside the pleadings...

Stoneeagle Services has sued Pay-Plus Solutions and Premier Healthcare Exchange for infringement of U.S. Patent RE 43,904 and RE 44,748 relating to healthcare provider reimbursement systems and methods.  Defendants, as has become all too common, moved for judgment on the pleadings early in the case, arguing that the patents are not patent eligible.  They challenged "representative" claim 2:

2. A method of facilitating payment of adjudicated health care benefits to a health care provider comprising:
identifying the health care provider that renders medical services in anticipation of payment;
identifying a payer that has agreed to pay the health care provider on behalf of a patient subject to preselected conditions;
identifying an administrator that determines whether the medical services conducted by the service provider meet the preselected conditions by the payer, generates an explanation of benefits, and authorizes payment of the service provider for an authorized amount;
intercepting the explanation of benefits and payment information transmitted from the administrator to the health care provider;
acquiring a single-use, stored-value card account number and loading it with funds equal to the authorized amount;
merging the stored-value card account number, the authorized amount, a card verification value code, and an expiration date with the explanation of benefits into a computer-generated image file; and
transmitting the image file to the health care provider via a computer-implemented transmission.

Defendants argued that the claim was directed to the abstract idea of "paying a service provider by transmitting a payment combined with an explanation of the payment."  Plaintiff disagreed, arguing that the claim was narrowly directed at "(1) the use of stored-value cards; (2) by third-party payors; (3) to pay healthcare benefits; (4) via a computer-generated file, which couples the payment with an explanation of benefits."  Plaintiff also offered expert testimony in support of its position.

The Court recognized the logistical issue with entertaining such a motion at such an early stage in the proceedings.  Specifically, regardless of the parties' arguments, the Court must analyze whether the claims (not just a "representative" claim) are directed to an "abstract idea" and if so, whether the elements of the claims (considered individually and in combination) contain an "inventive step." How a Court can properly do this without looking beyond a patent and its specification is not clear.

Upon careful consideration of the parties' filings, Defendant's Motion for Judgment on the Pleadings is denied, as premature.  As an initial matter, both Defendants and Plaintiff cite to matters outside of the pleadings, in support of their respective positions, including the prosecution history of a "parent" patent, an expert report prepared by Robert Allen (Plaintiff's Chairman and CEO), and a declaration submitted by Mr. Allen.  However, discovery is still ongoing, and the record is thus not "fully developed."  Jozwiak [v. Stryker], 2010 WL 743834 at *4.  Due to the deficiency of the available record, the Court declines to convert Defendant's Rule 12(c) motion into a motion for summary judgment.
* * *
In this case, the parties dispute the basic character of the claimed subject matter. ... At the very least, proper construction of the term "stored-value card" is necessary prior to an assessment of whether the claims implicate a fundamental economic practice, and whether the claims comprise a sufficiently inventive process.

The Court was not also inclined to address claims as "representative" without a stipulation:

Finally, Defendant's Motion unilaterally designates certain claims as "representative." ...
"[A] party challenging the validity of a claim, absent a pretrial agreement or stipulation, must submit evidence supporting a conclusion of invalidity of each claim the challenger seeks to destroy."  Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 625 (Fed. Cir. 1984) (underlined emphasis added); see, e.g., Alice Corp. Pty. Ltd., 134 S. Ct. at 2352 (noting that the parties agreed on representative claims); cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'l Ass'n, Nos 2013-1588, et al., ___ F.3d ___, 2014 WL 7272219 at *4 (Fed. Cir. Dec. 23, 2014) (affirming district court's designation of claims as representative where patentee did not object).

Defendants' Motion fails to meaningfully address the claims not designated as "representative."  In order to narrow the issues, and to conserve both the Court's and the parties' resources, the parties are encouraged to stipulate to representative claims.  Absent a stipulation, Defendants will be required to address the challenged claims individually in any subsequent motion.

(emphasis provided by Court).  

Motion for judgment on the pleadings, denied as premature.

Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc., Case No. 8:13-CV-2240 (M.D. Fla. Feb. 9, 20150) (J. Covington)

Are Declaratory Judgment Claims of Non-infringement in Response to a Claim of Infringement Redundant and Unnecessary?

Yes.

The Alexis Brothers, acrobatic circus performers who regularly perform as a featured act of Cirque de Soleil, own a copyright registration titled "Peace and Discord" for an original choreographic work consisting of a sequences of poses and transitions for theatrical performances.  A sample of their performance is here.

The Alexis Brothers sued Cirque Italia, LLC and two acrobatic performers (the "A&A Duo") for copyright infringement.  A sample of their performance is here.

The A&A Duo asserted counterclaims seeking (among others):
1) Declaratory judgment that they did not infringe;
2) Declaratory judgment that the Alexis Brothers were engaged in copyright misuse
3) Declaratory judgment that the copyright registration was not enforceable
4) relief for unfair competition;
5) relief for defamation.


Concerning the declaratory judgment counts, such counts were merely redundant of plaintiff's claim and thus unnecessary:

The exercise of jurisdiction over a claim for declaratory relief is broadly discretionary. Knights Armament Co. v. Optical Sys. Tech.,568 F.Supp.2d 1369, 1374 (M.D.Fla.2008) (Conway, J.). This discretion permits declination of claims in which “a direct action involving the same parties and the same issues has already been filed.” Knights, 568 F.Supp.2d at 1374–75. The defendants fail to demonstrate how the issues raised by their declaratory claims differ from the issues raised by the plaintiffs' claim and the defendants' affirmative defenses.

Regarding count 2 -- Copyright misuse -- the Court also held that such a claim offers no basis for relief:

Count II requests a declaration that the plaintiffs misused their copyright. The plaintiffs move to dismiss Count II and argue that copyright misuse is not an independent claim for relief. Telecom TechnicalServs. Inc. v. Rolm Co., 388 F.3d 820, 830 (11th Cir.2004) confirms that the Eleventh Circuit “has not recognized, but has not rejected, misuse as a defense to infringement suits.” Microsoft Corp. v. Jesse's Computers & Repair, Inc., 211 F.R.D. 681, 684 (M.D.Fla.2002) (Jones, Mag. J.) observes that “while district courts in this Circuit have discussed the applicability of copyright misuse, none of these courts have expressly applied it as a valid defense.” Unrecognized by the Eleventh Circuit as a defense, copyright misuse offers no basis for a claim for relief. Cf. Shirokov v. Dunlap, Grubb & Weaver, PLLC, 2012 WL 1065578 at*32 (D.Mass. March 27, 2012) (O'Toole, J.) (finding that copyright misuse is not an independent claim for relief, “especially in light of the fact that the First Circuit has not yet recognized the doctrine even as a defense to copyright infringement claims”).

The Court also dismissed A&A Duo's claims for unfair competition and defamation for failure to plead sufficient facts to establish each of the claims' elements.

Motion to dismiss Second Amended Counterclaim Granted-in-part.
Lorador v. Vasquez, Case No. 8:14-CV-433 (M.D. Fla. Jan. 22, 2015) (J. Merryday)

Illegal Downloads - Is an IP Address Enough Information?

The adult film industry has been accused of trying to coerce settlements in matters relating to alleged illegal downloading of adult films by shaming the accused infringer through publicity.  I write below about Magistrate Judge Wilson crafting a solution to protect a purported infringer from a similar shame -- that of illegally downloading (and watching??) a Steven Seagal movie!

I've written before about issues of tracking down purported illegal downloads of copyrighted materials.  A typical fact pattern is the owner of the copyright tracks down an IP address where the copyrighted materials were apparently downloaded and/or copied without permission.  The copyright owner files suit in district court against John/Jane Doe, and asks the Court for leave to serve early discovery, namely a subpoena to the ISP trying to determine the identity associated with the IP address on the day(s) of the purported infringement.

A theme developing in defense of these attempts at discovery is that the identity of the subscriber may not be the actual infringer, and thus the attempt to obtain such discovery may be overbroad and improper.  See e.g. Malibu Media v. Doe, Case No. 1:14-CV-20213 (S.D. Fla. Mar. 5, 2014) (J. Ungaro).  Defendants extend the argument to explain that, in some instances, the copyright holder may attempt to coerce a settlement by publicly naming the purported infringer.

Imagine, for instance, the IP address is associated with a coffee shop on the day of the purported infringement.  Does that mean the coffee shop or its employees necessarily engaged in the infringing activity?  No.  But does it mean that that shop may be in a better position to inform the copyright owner who the purported infringer may be?  Or perhaps the coffee shop will have records from which that information may be derived.

Good Man Productions claims ownership of the copyright to the Steven Seagal film "A Good Man" and claims illegal downloading of the film occurred in the Middle District of Florida.  GMP sought leave to issue a subpoena to determine the identity associated with the IP address in question.  The Court allowed the subpoena, but with the following conditions:

To address potential issues relating to the identity of the defendant, the parties shall adhere to the following procedures:
a. The plaintiff shall immediately inform the defendant who contacts the plaintiff or whom the plaintiff contacts that said defendant has the right to obtain legal counsel to represent him or her in this matter and that anything said or provided by the defendant can and likely will be used against him or her in this proceeding.

b. If the defendant does not wish to be contacted by the plaintiff, the defendant may at any time inform the plaintiff by phone or send the plaintiff's counsel a letter or e-mail addressed to [plaintiff's counsel] that states: “Please do not contact me (again) prior to serving me in this matter.”

c. The plaintiff must notify the defendant, or his or her counsel if represented, of the plaintiff's intent to name and serve the defendant at least 14 calendar days prior to seeking issuance of a summons from the Clerk for the identified defendant.

d. The plaintiff shall inform the defendant of the potential for sanctions under Rule 11, Fed.R.Civ.P., if the defendant is incorrectly identified.

e. The plaintiff shall provide a copy of this Order to the defendant.

f. The plaintiff must notify the defendant that he or she may submit a written or electronic objection to the plaintiff's counsel. If the defendant asserts that he or she did not personally commit the infringing act, the defendant must identify the individual responsible for the infringement, or, if the identity of the infringing individual is unknown, provide exculpatory evidence regarding the defendant's innocence. The plaintiff's counsel shall file, or attempt to file, that objection, under seal, with this court, along with any response the plaintiff has to the objection. See Local Rule 1.09. Thereafter, the court will consider the defendant's objection and the response, and determine if the case shall proceed against the identified defendant. Until the court makes such a determination, the plaintiff may not identify the defendant by name in this lawsuit. If, however, the defendant does not object in writing or electronically, the plaintiff may proceed by naming the defendant in this case

This approach appears to strike a balance between a plaintiff's need to gain discovery and a potentially mis-identified defendant's rights.  We'll see if other courts are inclined to follow such an approach.

Motion for Leave to Serve Subpoena, granted.
Good Man Productions, Inc. v. Doe, Case No. 8:14-CV-3007 (M.D. Fla. Dec. 15, 2014) (Mag. Wilson)

Attorneys Fees Under the Copyright Act? (Good Idea To Have A Contractual Right Also)

I've previously written about the litigation brought by Yellow Pages Photos ("YPP") against Ziplocal and Yellow Pages Group ("YPG").  YPP proceeded to trial against Ziplocal and YPG.  YPP next sought an award of its attorneys fees against Ziplocal.

At trial, the jury found that Ziplocal breached the End User License Agreement ("EULA") between Ziplocal and YPP.  That agreement provided:

In the event of legal action to enforce this agreement or in conjunction with the use of the product the prevailing party shall be entitled to recover its attorney's fees and costs, in addition to any other legal and equitable relief granted.

The jury also found that Ziplocal willfully infringed 123 copyrights belonging to YPP.  The jury awarded $100,000 as damages for Ziplocal's contributory copyright infringement and $1 in actual damages for copyright infringement.  The jury suggested zero dollars in statutory damages.

YPP requested its fees be awarded under both the EULA and the Copyright Act.  Concerning the EULA, the Court had no discretion to avoid an award:

Florida law considers attorney’s fee provisions contracts of indemnification. Lashkajani v. Lashkajani, 911 So.2d 1154, 1158 (Fla. 2005) (explaining purpose of provision is to “protect and indemnify” the interests of the parties, not to enrich prevailing party). A trial court may not exercise discretion to decline to enforce the provision. See North Am. Clearing, Inc. v. Brokerage Computer Sys., Inc., 395 F.App’x 563, 567 (11th  Cir. 2010) (unpublished opinion) (citing Lashkajani). 

Because the jury found against Ziplocal on all three claims submitted to it, YPP was the prevailing party, notwithstanding Ziplocal's success in warding off a significantly larger damage theory, including Ziplocal's ability to fend off any damages under the breach of EULA theory:

Ziplocal cites no persuasive authority for this proposition, and the Court finds no compelling circumstances that would warrant deeming Ziplocal the prevailing party. Florida courts have held that the party against whom a contract has been breached may be the prevailing party even though the jury awarded “$0” damages. See Khodam v. Escondido Homeowner’s Ass’n, 87 So.3d 65 (Fla.Dist.Ct.App. 2012); The Green Companies, Inc. v. Kendall Racquetball Investment, Ltd., 658 So. 2d 1119 (Fla.Dist.Ct.App. 1995). Accordingly, Yellow Pages Photos is entitled to attorney’s fees and costs pursuant to the EULA

Concerning the Copyright Act, the Court does have discretion to determine an award.  See 17 U.S.C. § 505. And the Court exercised its discretion:

Assuming that Plaintiff is the prevailing party, the Court declines to award attorney’s fees pursuant to the statute. Using the nonexclusive factors noted in Fogerty, as tempered by the purposes of the Copyright Act, an award of fees to either side would run afoul of any perceived even-handed approach. The jury’s verdict speaks for itself that Ziplocal committed both willful infringement and willful contributory infringement.  Nevertheless, the jury did not award a great amount of damages. While the Plaintiff vigorously and successfully defended its copyright, the damages sought based on the number of works at 10,200 far exceeded those actually recovered for the less than 200 works.  The disconnect between the damages sought and the damages awarded weigh heavily against an award of fees. The Court exercises its discretion to deny attorney’s fees under the Copyright Act in this very contentious case.

Motion to award fees granted in part, denied in part.

Yellow Pages Photos, Inc. v. Ziplocal, LP, Case No. 8:12-CV-755 (M.D. Fla. Oct. 31, 2014) (J. Lazzara)