IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT United States Court of Appeals
Fifth Circuit
FILED
January 4, 2008
No. 07-50067 Charles R. Fulbruge III
Clerk
VIRGIN RECORDS AMERICA INC, a California Corporation;
SONY BMG MUSIC ENTERTAINMENT, a Delaware General Partnership;
ARISTA RECORDS LLC, a Delaware Limited Liability Company;
UMG RECORDINGS INC, a Delaware Corporation
Plaintiffs – Appellees
v.
CLIFF THOMPSON
Defendant – Appellant
Appeal from the United States District Court
for the Western District of Texas
USDC No. 5:06-CV-592
Before JONES, Chief Judge, and WIENER and CLEMENT, Circuit Judges.
PER CURIAM:
Cliff Thompson (“Thompson”) appeals the district court’s denial of his
motion for attorney’s fees under the Copyright Act, 17 U.S.C. § 505. Thompson
argues that the court misapplied the standard governing the award of attorney’s
fees in copyright actions. We affirm the district court’s decision.
I. BACKGROUND
In July 2006, Virgin Records and other recording companies (collectively
“Plaintiffs”) filed a copyright infringement action against Thompson, contending
that he used a file-sharing program to illegally distribute digital audio files on
No. 07-50067
which Plaintiffs held copyrights. Before filing this action, Plaintiffs learned that
an Internet user named “gigette@KaZaA” was openly distributing hundreds of
digital audio files using a file-sharing program. Plaintiffs traced the infringer
to an Internet Protocol (“IP”) address and eventually to an Internet account
registered to Thompson.
Once Thompson was identified, Plaintiffs attempted to contact him to
resolve the matter for six months before finally filing suit. In January 2006,
Plaintiffs sent Thompson a letter informing him that they intended to file a
lawsuit against him “shortly” for copyright infringement. The letter stated that
Plaintiffs had gathered evidence that Thompson had infringed their copyrights
and asked him to contact them if he had “an interest in discussing this matter,
including settlement.” Thompson did not respond to the letter. In succeeding
months, Plaintiffs attempted to contact Thompson by phone and email.
Although Thompson denies receiving these voice messages or emails, it is
undisputed that he received Plaintiffs’ initial letter.
In August, Thompson filed an answer and a counterclaim requesting
attorney’s fees that accused Plaintiffs of engaging in “sue first, talk later”
litigation. Plaintiffs moved to dismiss the counterclaim on September 5, 2006.
Two days later, Thompson disclosed in his response to this motion that “if
anyone downloaded the songs in question it probably would be [my] adult
daughter.” Thompson did not, however, tell Plaintiffs his daughter’s name.
Thompson’s disclosure came more than eight months after Plaintiffs initially
wrote to him.
Through their own efforts, Plaintiffs identified Thompson’s adult daughter
as Brigette Thompson. On October 6, Thompson’s counsel confirmed that Ms.
Thompson was the direct infringer who used Thompson’s Internet account.
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When the Plaintiffs moved to dismiss their case, Thompson reiterated his
demand for attorney’s fees. The district court granted the former motion and
denied the latter, and Thompson appealed.
II. STANDARD OF REVIEW
This court reviews a district court’s refusal to award attorney’s fees in a
copyright infringement case for an abuse of discretion. Positive Black Talk Inc.
v. Cash Money Records, Inc., 394 F.3d 357, 380 (5th Cir. 2004). “A trial court
abuses its discretion in awarding or refusing to award attorney’s fees when its
ruling is based on an erroneous view of the law or a clearly erroneous
assessment of the evidence.” Id.
III. DISCUSSION
The Copyright Act authorizes a court to award reasonable attorney’s fees
to the prevailing party in a suit under the Act. See 17 U.S.C. § 505 (“In any civil
action under this title, the 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.”). In
Fogerty v. Fantasy, Inc., 510 U.S. 517, 534–35 (1994), the Supreme Court held
that attorney’s fees should be awarded evenhandedly to both prevailing plaintiffs
and defendants in copyright actions. As the district court recognized, an award
of attorney’s fees to the prevailing party in a copyright action is “the rule rather
than the exception and should be awarded routinely.” Positive Black Talk, 394
F.3d at 380 (quoting McGaughey v. Twentieth Century Fox Film Corp., 12 F.3d
62, 65 (5th Cir.1994)).
Nevertheless, recovery of attorney’s fees is not automatic. See Fogerty, 510
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U.S. at 534; Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 817 (5th Cir.
1997) (noting that the Supreme Court “repudiated the ‘British Rule’ for
automatic recovery of attorney’s fees by the prevailing party” and holding that
the district court did not abuse its discretion in denying fees). “[A]ttorney’s fees
are to be awarded to prevailing parties only as a matter of the court’s discretion.”
Fogerty, 510 U.S. at 534. The Supreme Court listed several non-exclusive factors
that a court may consider in exercising its discretion: “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 534 n.19 (quoting Lieb v. Topstone Indus.,
Inc., 788 F.2d 151, 156 (3d Cir. 1986)).
In this case, the district court “set forth the standard described above,
noting the text of [17 U.S.C. § 505], the principle that fee awards — although
discretionary — are the rule rather than the exception and should be awarded
routinely, and that under Fogerty the court’s discretion is guided by” a non-
exclusive list of factors. Positive Black Talk, 394 F.3d at 381–82 (holding that
the district court did not abuse its discretion in denying attorney’s fees to
prevailing defendants). The court then applied those factors to the facts of this
case and determined that they weighed against awarding attorney’s fees.
First, the court determined that Plaintiffs’ lawsuit was not frivolous or
objectively unreasonable, citing several reasons for this conclusion. The court
found that “Plaintiffs discovered substantial copyright infringement of their
songs by a file-sharing program attached to an internet [sic] account registered
to Thompson.” The court also found that the Plaintiffs attempted to contact
Thompson to resolve this matter for six months prior to filing this lawsuit.
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Second, the court concluded that Plaintiffs’ “motivation in bringing the suit
was proper.” The court found no indication that Plaintiffs “prosecuted this suit
with malevolent intent.” Instead, the court determined that Plaintiffs acted
properly to protect their copyrights after they discovered copyright infringement
of their songs. The court also found that Plaintiffs “immediately moved to
dismiss” their suit against Thompson after they identified the adult daughter
that Thompson acknowledged might be responsible for the copyright
infringement.
Third, the court concluded that awarding Thompson attorney’s fees would
not advance considerations of compensation and deterrence. These Plaintiffs
should not be deterred from bringing future suits to protect their copyrights
because they brought an objectively reasonable suit. Thompson, however,
“delayed the prompt resolution” of this litigation by failing to respond to
Plaintiffs’ pre-suit communications and to disclose the identify of the true
copyright infringer.
This court sees no abuse of discretion in the district court’s denial of
Thompson’s motion for attorney’s fees. In response to the court’s careful
articulation and application of the governing standard, Thompson has “offered
nothing on appeal to compel a conclusion that the district court abused its
discretion.” Creations Unlimited, 112 F.3d at 817.
AFFIRMED.
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