Zuk v. E. Pa. Psychiatric Inst. of the Med. Coll. of Pa. - No. 95-2238, 1996 U.S. Dist. LEXIS 1259 (E.D. Pa. Feb. 1, 1996)

Rule:

Although attorneys fees are not automatically allowable to the prevailing party in a copyright-infringement case under 17 U.S.C. § 505, this is plainly the kind of case in which a discretionary award of counsel fees is proper, applying the standards outlined in Lieb v. Topstone Industries, Inc., 788 F.2d 151 (3d. Cir.1986).

Facts:

Plaintiff claimed that the defendant was infringing his copyright in certain films because defendant did not deliver to plaintiff certain copies of the films allegedly in defendant's possession. Plaintiff had never registered a copyright in the films, and the copies in question had been paid for by the defendant. Defendant had sought to head off litigation by explaining the defenses to plaintiff’s counsel, and, after suit was filed, again afforded plaintiff an opportunity to withdraw the litigation. Summary judgment was granted in favor of the defendant. Subsequently, defendant has filed a motion for counsel fees and for sanctions under F.R.Civ.P. 11.

Issue:

Under the circumstances, should the court grant defendant’s motion for counsel fees and for sanctions? 

Answer:

Yes.

Conclusion:

The court noted that although attorneys’ fees were not automatically allowable to the prevailing party in a copyright-infringement case under 17 U.S.C. § 505, the instant case was plainly the kind of case in which a discretionary award of counsel fees was proper, applying the standards outlined in Lieb v. Topstone Industries, Inc., 788 F.2d 151 (3d. Cir.1986). According to the court, the plaintiff’s counsel failed to conduct an adequate investigation into the facts and the law, within the meaning of F.R.Civ.P. 11, and if a tolerably adequate inquiry had preceded the filing of this lawsuit, no lawsuit would have been filed. Thus, joint and several liability should be imposed under both F.R.Civ.P. 11 and 28 U.S.C § 1927, upon plaintiff's counsel as well as plaintiff, for the counsel fee award.