USDC D. Massachusetts, February 4, 2011

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  • Court awards attorney’s fees to counter-claim plaintiffs, but reduces their requested amount by 45% because counterclaim defendant’s claim was not frivolous, there is no need for deterrence, and to reflect the apportionment of copyright and non-copyright claims.

Plaintiff Jurek Zamoyski sued defendants, heirs of Bob Marley (“Marley Parties”), for copyright infringement. The Marley Parties counter-claimed for a declaration that they owned the copyrights at issue, breach of contract, and state law claims. The court dismissed Zamoyski’s copyright infringement claim as untimely, and a jury returned a verdict in favor of the Marley Parties on their declaratory judgment action and breach of contract.

The Marley Parties then moved for attorney’s fees and costs in the amount of $160,228.30. Zamoyski objected, arguing, among other things, that attorney’s fees are not available in a declaratory judgment action. The court disagreed, relying on InvesSys, Inc. v. McGraw-Hill Cos., Ltd., 369 F.3d 16 (2004), which addressed attorney’s fees in a case with mixed claims. The court held that the Marley Parties’ counter-claim for a declaratory judgment regarding ownership of the copyrights, even though not invoking the Copyright Act, is a “like matter” for which Section 505 fees are available.

Turning to the Fogerty factors, the court held that Zamoyski’s claim for infringement was objectively unreasonable because he waited more than three years after discovering the alleged infringement to file suit, but the court held his claim was not frivolous, as evidenced by the Marley Parties’ agreement to drop their counter-claim for frivolousness under state law. The court concluded attorney’s fees are appropriate, but reduced the amount requested by 45% -- the court reduced the amount by 10% because Zamoyski’s claim was objectively unreasonable but not frivolous; the court reduced the amount by another 10% because there was no need to deter Zamoyski from filing another claim; and the court reduced the amount by another 25% to reflect an apportionment of the time the Marley Parties’ attorneys spent on the copyright claims and the non-copyright claims and on successful and unsuccessful claims.