FILED
NOT FOR PUBLICATION
MAR 18 2021
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
STRIKE 3 HOLDINGS LLC, a Delaware No. 20-35196
corporation,
D.C. No. 2:17-cv-01731-TSZ
Plaintiff-Appellant,
v. MEMORANDUM*
JOHN DOE, subscriber assigned IP
address 73.225.38.130,
Defendant-Appellee,
and
TOBIAS FIESER, Third-Party Witness; et
al.,
Real-party-in-interest.
Appeal from the United States District Court
for the Western District of Washington
Thomas S. Zilly, District Judge, Presiding
Argued and Submitted March 3, 2021
Seattle, Washington
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
Before: RAWLINSON and BYBEE, Circuit Judges, and ENGLAND,** District
Judge.
Strike 3 Holdings, LLC appeals the district court’s award of attorney’s fees
in favor of John Doe on Doe’s counterclaim for non-infringement. Strike 3 argues
that Doe lacked standing to pursue his counterclaim because Strike 3 voluntarily
dismissed its copyright infringement claim against Doe and could not renew that
claim in the future. Strike 3 also contends that the district court abused its
discretion by awarding fees under the Copyright Act, 17 U.S.C. § 505, because the
fee award did not further the Act’s essential goals. The district court had
jurisdiction under 28 U.S.C. §§ 1331, 1338(a). We have jurisdiction under 28
U.S.C. § 1291, and we affirm.
Contrary to Strike 3’s argument, the district court correctly held that Doe
retained standing to pursue his declaratory relief counterclaim despite Strike 3
voluntarily dismissing its complaint without prejudice. We review the district
court’s standing determination de novo. Mayfield v. United States, 599 F.3d 964,
970 (9th Cir. 2010). Standing for declaratory relief requires a similar showing as
any other case or controversy. See MedImmune, Inc. v. Genentech, 549 U.S. 118,
126–27 (2007) (citations omitted). The party seeking declaratory relief must
**
The Honorable Morrison C. England, Jr., Senior United States District
Judge for the Eastern District of California, sitting by designation.
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demonstrate (1) a concrete and imminent injury, (2) that is causally connected to
the defendant’s actions, (3) which could be redressed by a favorable decision. See
id.; Lujan v. Defs. of Wildlife, 504 U.S. 555, 560–61 (1992). Strike 3 challenges
only the first of those requirements: that Doe cannot demonstrate a concrete and
imminent injury.
The pending litigation between Doe and Strike 3, coupled with the real
threat of future litigation between the parties, constitutes the type of injury that
confers constitutional standing. See Societe de Conditionnement en Aluminium v.
Hunter Eng’g Co., Inc., 655 F.2d 938, 944 (9th Cir. 1981) (finding a case or
controversy where declaratory relief plaintiff had “real and reasonable
apprehension” of future suit). Strike 3’s voluntary dismissal of its infringement
claims against Doe placed him in the precarious position of deciding whether to
pursue his non-infringement counterclaim or to surrender the claim and hope that
Strike 3 would not bring further action based his prior alleged infringement. And
while Strike 3 enjoyed the “absolute right” to dismiss its infringement claim under
Federal Rule Civil Procedure 41(a)(1), Am. Soccer Co., Inc. v. Score First Enters.,
187 F.3d 1108, 1110 (9th Cir. 1999), it did not have the absolute right to choose
the consequences of its without-prejudice dismissal. Doe’s fear of future
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prosecution, based on the very real prosecution to that point and the thinly veiled
threats of future contributory-infringement claims, was concrete and imminent.
Nor are we persuaded by Strike 3’s claim that Cobbler Nevada, LLC v.
Gonzalez, 901 F.3d 1142, 1147 (9th Cir. 2018) or Strike 3’s proposed covenant not
to sue rendered Doe’s fear of future litigation speculative. As Strike 3 admitted at
oral argument, it was nearly certain that Doe’s son was the infringer, making it
likely that Strike 3 would pursue other infringement claims against Doe in the
future. Thus, Doe did not lack standing to pursue his counterclaims.
The district court did not err in awarding Doe attorney’s fees. A district
court enjoys “wide latitude” to award fees in a copyright case “based on the totality
of the circumstances.” Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979,
1985 (2016). That discretion is guided by the non-exclusive factors set out in
Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994): the frivolousness of the
copyright claim, the party’s motivation for bringing the claim, the objective
reasonableness of the claim, and the need to compensate or deter such claims. We
may reverse only if the district court relied on “an inaccurate view of the law or a
clearly erroneous finding of fact.” Fantasy, Inc. v. Fogerty, 94 F.3d 553, 556 (9th
Cir. 1996) (citations and quotations omitted).
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The district court limited its analysis of the Fogerty factors to compensation
and deterrence, ultimately concluding that compensating Doe for litigating a
meritorious copyright defense sufficiently advanced the goals of the Copyright
Act. We admit that the district court’s analysis of the Fogerty factors could have
been more robust as it merely considered the factors it deemed relevant and applied
them to this case. But the factors are, by definition, non-exclusive, Fogerty, 510
U.S. at 534 n.19, and the district court was not required to discuss each one in
depth. Thus, we are not left with “a definite and firm conviction” that the district
court erred. Wall Data Inc. v. Los Angeles County Sheriff’s Dept., 447 F.3d 769,
787 (9th Cir. 2006).
AFFIRMED.
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