District court refuses request of Marvin Gaye’s family for $3.5 million in attorneys’ fees following jury verdict in “Blurred Lines” trial.

On March 10, 2015, the jury in the “Blurred Lines” trial returned a verdict finding that Pharrell Williams, Robin Thicke, and Clifford Harris Jr.’s composition of Thicke’s 2013 pop hit infringed the copyright held by Marvin Gaye’s family in the late R&B artist’s composition for the 1977 song “Got to Give It Up.” The jury awarded the Gaye family $7.4 million in actual damages and profits, an amount which the district court later reduced to $5.3 million, and also awarded the Gaye family a 50 percent running royalty on future songwriter and publishing revenue for “Blurred Lines.”

On Jan. 11, 2016, the Gaye family moved for approximately $3.5 million in attorneys’ fees and costs. The district court denied the application for attorneys’ fees and ordered further submissions on the issue of costs.

In deciding whether to exercise its discretion in awarding fees to the Gaye family as the prevailing party the district court applied the three factors set forth in Fogerty v. Fantasy, Inc. — the degree of success obtained by the prevailing party, whether the claims or defenses furthered the purposes of the Copyright Act, and whether the chilling effect of fees may be too great or impose an inequitable burden. The district court concluded that the jury verdict weighed “clearly” in favor of an award of fees, as the Gaye family prevailed on the merits, rather than on technical issues. However, it further held that none of the other factors favored an award of fees. The district court concluded that the parties’ claims and defenses were of equal significance in contributing to an informed discussion on the demarcation of copyright law — an important purpose of the Copyright Act. Specifically, the parties’ respective positions required the district court to resolve “many novel issues” of copyright law — including the scope of the 1909 Act (which applied to Gaye’s composition, as a pre-1978 work), the admissibility of sound recordings where a copyright is limited to the composition contained in the deposit sheet, and jury instructions and verdict forms appropriate for copyright claims based on musical compositions. The district court also pointed out that awarding $3.5 million in fees and costs against parties whose defenses it described as “objectively reasonable and potentially meritorious” could be seen as causing a chilling effect on those against whom future infringement actions are brought.

In determining whether fees were appropriate, the district court also considered the nonexclusive Lieb v. Topstone Industries, Inc. factors — the plaintiff’s motivation in bringing suit, the frivolousness of the claims, the extent to which factual and legal elements of the case were objectively unreasonable, and considerations of compensation and deterrence. The district court held that none of these factors favored an award of fees.

Upon considering declarations submitted by the parties regarding their prelitigation behavior and settlement offers exchanged, the district court decided that a factual dispute remained as to the question of motivation. Ultimately, it stated, the amount of time and effort the parties devoted to the case weighed against a finding of bad faith, as it was unlikely either side would have expended the resources they had if they believed their claims lacked merit.

Addressing frivolousness and factual and legal unreasonableness together, the district court found insufficient evidence that Williams, Thicke and Harris acted in bad faith or should have known that their chances for success were slim. The district court rejected the argument that the inconsistency between Williams’ and Thicke’s prelitigation statements to the press that Gaye’s song “inspired” them and their later statements under oath indicated objective unreasonableness. The district court noted, “It is not uncommon for those promoting a new song or creative work within the entertainment industry to seek to attract attention that will be conveyed to potential consumers.” That the plaintiffs had obtained expert opinions from two musicologists prior to the litigation opining that there was no substantial similarity between the songs at issue further counseled against a finding of unreasonableness.

The district court also concluded that the substantial damages and running royalty awards were sufficient to compensate the Gaye family and deter the plaintiffs and others in the industry from future infringement.

Regarding costs, the Gaye family was entitled to costs only with respect to its counterclaim based upon “Blurred Lines,” and not its rejected counterclaim based on Thicke’s song “Love After War,” which it alleged infringed the copyright for Gaye’s track “After the Dance.” Upon identifying problems with the parties’ apportionment of costs between the two counterclaims and finding neither side’s calculation of costs persuasive, the district court ordered further submissions on that calculation. Finally, the district court granted the Gaye family’s motion to strike an expert affidavit submitted by the plaintiffs on the fees question, on the basis that the Gaye family had previously retained that same expert in connection with this litigation. It denied the Gaye family’s motion to file materials related to the motion to strike under seal.