United States District Court, D. Nevada
C. MAHAN UNITED STATES DISTRICT JUDGE
before the court is defendants Joseph Stiglitz and the
Organization for Economic Cooperation and Development's
(“OECD”) joint motion for attorney's fees and
taxable and nontaxable costs. (ECF No. 67). Plaintiff
International Institute of Management (“IIM”)
filed a response (ECF No. 71), to which defendants replied
(ECF No. 72).
was a copyright infringement action in which IIM alleged that
the OECD, a Paris-based intergovernmental organization for
economic research and policy, and Stiglitz, a Nobel laureate
and professor of economics at Columbia University, stole
credit for IIM's work on using non-GDP factors to measure
the well-being of countries. (ECF No. 1).
a small Nevada think tank that publishes economics papers on
the internet. Id. In 2005, IIM published a two-page
paper titled “Gross National Well-being (GNW)
Index” (“2005 paper”). Id. The
2005 paper generally discusses the idea of using non-GDP
factors to measure the well-being of countries and provides
seven factors that such an index might use. (ECF No. 23-2).
The 2005 paper does not show how to use these factors to
measure a country's well-being. Id.
2006, IIM published a second paper titled “The American
Pursuit of Unhappiness” (“2006 paper”).
(ECF No. 1). The 2006 paper is six pages long and generally
discusses why a nation's happiness should be measured
with non-GDP factors. (ECF No. 23-3). The paper also
elaborates on non-GDP factors that various measurement
approaches might use. Id. Like the 2005 paper, the
2006 paper does not provide any solution on how to measure
the well-being of countries with non-GDP factors.
OECD's Commission on the Measurement of Economic
Performance and Social Progress (the
“commission”) conducts research on measuring the
well-being of countries. (ECF No. 1). Stiglitz, who is a
resident of New York, is the chairman of the commission and
substantially contributed to various reports and articles
that the commission published. Id.
2009, the commission published a 291-page report titled
“Report by the Commission on the Measurement of
Economic Performance and Social Progress” (“2009
report”). (ECF Nos. 1, 23-4). Twenty-two commissioners,
five of whom are Nobel laureates, wrote the 2009 report,
which discusses the limits of GDP as an indicator of economic
performance. (ECF No. 23-4). The report also extensively
addresses problems with various measurement techniques and
how to improve upon existing methods to determine the
well-being of countries. Id.
2011, the OECD created the Better Life Index, which uses
non-GDP factors to measure the well-being of countries. (ECF
No. 23-5). The OECD published the index on the internet on an
interactive website that millions of people have used to
compare the well-being of countries. Id. According
to the complaint, Stiglitz is also selling a book on
Amazon.com which contains material from IIM's copyright
protected works. (ECF No. 1). IIM alleges that the 2009
report, the Better Life Index, and Stiglitz' book
infringe on its copyrights in the 2005 and 2006 papers.
September 10, 2018, IIM initiated this action, asserting four
causes of action: (1) copyright infringement; (2) vicarious
and/or contributory copyright infringement; (3) unfair
competition; and (4) false advertising in violation of the
Lanham Act. Id. On June 20, 2019, the court granted
defendants' motions to dismiss (ECF Nos. 19, 21) and
dismissed this action without prejudice for a lack of
personal jurisdiction over defendants (ECF No. 64).
defendants move for the award of attorney's fees and
taxable and nontaxable costs. (ECF No. 67).
Copyright Act provides that “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.” 17 U.S.C. § 505. The court may
“award a reasonable attorney's fee to the
prevailing party as part of the costs.” 17 U.S.C.
§ 505. Section 505 grants district courts “broad
leeway” in considering motion's for attorney's
fees. Kirtsaeng v. John Wiley & Sons, Inc., 136
S.Ct. 1979, 1985 (2016) (quoting Fogerty v. Fantasy,
Inc., 510 U.S. 517, 534 (1994)). However, courts must
employ a case-by-case analysis and encourage meritorious
defenses to the same extent they encourage meritorious
copyright claims. Fogerty, 510 U.S. at 518.
considering whether to award attorney's fees under
Section 505, a district court may consider a nonexclusive
list of factors, which include “frivolousness,
motivation, objective unreasonableness (both in the factual
and legal components of the case) and the need in particular
circumstances to advance considerations of compensation and
deterrence.” Octane Fitness, LLC v. ICON Health
& Fitness, Inc., 134 S.Ct. 1749, 1756 (2014);
see also Fogerty, 510 U.S. at 539 n. 19. A district
court should give substantial weight to the objective
reasonableness factor. Kirtsaeng, 136 S.Ct. at 1988.
Courts in the Ninth Circuit also consider “the degree
of success obtained on the claim” and “whether
the chilling effect of attorney's fees may be too great
or impose an inequitable burden on an impecunious
plaintiff.” VMG Salsoul, LLC v. Ciccone, 824
F.3d 871, 887 (9th Cir. 2016); Ets-Hokin v. Skyy Spirits,
Inc., 323 F.3d 763, 766 (9th Cir. 2003).
Lanham Act also provides for the award of attorney's fees
to the prevailing party, though such an award is warranted
only in “exceptional cases.” 15 U.S.C. §
1117. A district court analyzing a request for attorney's
fees under the Lanham Act considers the
“‘totality of the circumstances' to determine
if the case was exceptional, exercising equitable discretion
in light of the nonexclusive factors identified in Octane
Fitness and Fogerty, and using a preponderance
of the evidence standard.” SunEarth, Inc. v. Sun
Earth Solar Power Co., Ltd., 839 F.3d 1179, 1181 (9th
Cir. 2016) (internal citations omitted). An
“‘exceptional' case is simply one that stands
out from others with respect to the substantive strength of a
party's litigating position ... or the unreasonable
manner in which the case was litigated.” Memory
Lane, Inc. v. Classmates, Inc., 646 Fed.Appx. 502, 504
the Copyright Act and Lanham Act permit courts to award
attorney's fees to a “prevailing party.” 17
U.S.C. § 505; 15 U.S.C. § 1117. A prevailing party
does not need to obtain a ruling on the merits to obtain
attorney's fees. CRST Van Expedited, Inc. v.
EEOC, 136 S.Ct. 1642, 1646 (2016) (finding that
“[t]here is no indication that Congress intended that
defendants should be eligible to recover attorney's fees
only when courts dispose of claims on the merits”);
see also Amphastar Pharm., Inc. v. Aventis Pharma
SA, 856 F.3d 696, 710 (9th Cir. 2017) (“we
conclude that the Supreme Court has effectively overruled
Branson's holding that when a defendant wins
because the action is dismissed for lack of subject matter
jurisdiction he is never a prevailing party.”).
preliminary matter, IIM argues that defendants do not satisfy
the “prevailing party” requirement of the
Copyright Act, and thus cannot recover attorney's fees.
(ECF No. 71). Specifically, IIM contends that only a judgment
on the merits can give rise to attorney's fees under
Section 505, and that “there is no prevailing party in
a Copyright Act case when the case is voluntarily dismissed
without prejudice.” Id.
arguments are without merit. Following the Supreme
Court's decision in CRST Van Expedited, a
defendant is not required to obtain a favorable judgment on
the merits in order to recover attorney's fees. 136 S.Ct.
at 1646. Further, nothing in CRST Van Expedited
indicates that a dismissal without prejudice necessarily
changes the calculus. Nonmerits dismissals are often without
prejudice, and this fact appears to have had no effect on the
determination that a defendant may prevail where “the
court's final judgment rejects the plaintiff's claim
for a nonmerits reason.” Id. at 1651.
the court dismissed this action without prejudice based on a
lack of personal jurisdiction over defendants. Defendants
have thus successfully rebuffed IIM's challenge in this
action. Accordingly, the court finds that defendants have
satisfied the “prevailing party” requirement of
Section 505 of the Copyright Act.
Attorney's fees under the Copyright Act
following factors weigh in favor of awarding attorney's
fees here: objective unreasonableness, degree of success
obtained, absence of chilling effect, and the need to advance
considerations of compensation and deterrence.
is objectively unreasonable where the party advancing it
“should have known from the outset that its chances of
success in th[e] case were slim to none.” SOFA
Entm't v. Dodger Prods., Inc., 709 F.3d 1273, 1280
(9th Cir. 2013). “A claim that is not
‘objectively unreasonable' at the outset can become
so if the litigant continues to pursue it when the litigant
knew or should have known that the chance of success was slim
to none.” Erickson Productions Inc. v. Kast,
No. 5:13-cv-05472-HRL, 2016 WL 3951659, at *2 (N.D. Cal. July
22, 2016) (citation omitted).
sought to hale a New York citizen and a foreign organization
into a Nevada federal court based on the bare allegations
that defendants operated the Better Life Index on a website,
sold a book with allegedly infringing materials on
Amazon.com, and published the 2009 report online. (ECF No.
1). In granting defendants' motions to dismiss, the court
found that “the complaint does not contain any
allegations of specific conduct related to Nevada other than
IIM's contacts with the forum.” (ECF No. 64). Based
on unambiguous Ninth Circuit authority, the court also held
that “merely uploading materials on a passive website
and placing products in the stream of commerce are not
affirmative acts that directly target Nevada.”
attempt to establish personal jurisdiction based on these
allegations had slim to no chance of success. Accordingly,
the court finds that this suit was legally objectively
Degree of success obtained
defendants did not obtain a substantive judgment on the
merits, they were successful insofar as this suit was
dismissed for a lack of personal jurisdiction. This dismissal
does not bar IIM from refiling in another jurisdiction, but
it does terminate further litigation in Nevada. While this is
likely not defendants' preferred outcome, it is without
question that they have obtained at least a modicum of
success in having this action dismissed.
not alleged that it lacks the resources to pay an award or
that it will be deterred from seeking to enforce valid
copyrights in the future. Rather, IIM argues that
“[w]ithout protection from retaliation against
good-faith and non-merit issues, few, if any, of the victims
of copyright infringement … will come forward to claim
their right, and the end result will be increased
infringement and decreased incentive to invest in creating
new works when dealing with defendants with large
pockets.” (ECF No. 71).
court finds this argument unavailing. That this case may have
been brought in good faith and was not dismissed on the
merits has little bearing on whether victims of copyright
infringement will continue to bring suit. An award of
attorney's fees here serves ...