Seventh Circuit: $70,000 in attorney fees affirmed for copyright and trademark appeal

November 29, 2007
Post by Blog Staff

Back in March, we wrote about a copyright and trademark case involving a novelty doll, "Pull My Finger Fred." In the case's previous trip to the Seventh Circuit, the court affirmed a verdict of copyright and trademark infringement, $291,000 in damages, and $575,000 in attorneys' fees. Now the parties are back, this time disputing the amount of attorneys' fees to be awarded on appeal. While the court reduced the amount originally requested, it affirmed an award of over $70,000 in attorneys' fees for handling the appeal.

More detail of JCW Investments, Inc. v. Novelty, Inc. after the jump.

After the original Seventh Circuit decision, the plaintiff, Tekky, submitted a request for fees and costs incurred on the appeal. It submitted the petition as a combined request, including both fees and costs in the same petition, but did not submit it until 30 days after final judgment was entered.

The Seventh Circuit had no trouble denying Tekky costs, simply noting that the petition was outside the time permitted by Appellate Rule 39(d)(1). However, the court did not take the defendant, Novelty, up on its request to consider the whole petition untimely. While Civil Rule 54 states that a request for attorneys' fees in the district court must be filed within 14 days, there is no analogous rule in appellate court. The court adopted a "general rule of diligence" should apply, and found the request for attorneys' fees timely in the absence of a time limit in the Rules or in the statute itself.

As to the attorneys' fees, the court rejected Novelty's argument that because the appeal was not frivolous, fees should not have been awarded. The Seventh Circuit rejected this argument based on the fee-shifting provision in the Copyright Act, 17 U.S.C. § 505. While that statute does not mandate an award of attorneys' fees to the prevailing party, the various factors relevant to determining whether fees should be awarded amply supported the district court's decision to grant attorneys' fees. For example, the court described the copyright infringement as "flagrant," and the trademark infringement as "willful." Accordingly, in this case, an award of fees was appropriate.

While novelty objected to the amount of the fees, it did not specifically describe its objections, such as excessive hourly rate or excessive time on certain tasks, or both. The ambiguity of the objection notwithstanding, the court did partially reduce the amount of fees awarded, finding that it was unreasonable for lead counsel to bill 33.25 hours to prepare the petition for costs and fees, for a total of nearly $15,000. The court reduced this amount by half. All in all, Tekky was awarded $70,423.75 in attorneys' fees in connection with the original appeal.

To read the full decision in JCW Investments, Inc. v. Novelty, Inc., click here.

To read our post about the original decision, click here.

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