I last wrote on the Renoir/Guino case decided by the Ninth Circuit creating perpetually unpublished works here. The defendants are now back in district court disagreeing with the Ninth Circuit's finding that the copyright is valid and pointing out that the Register of Copyrights might not have registered the work if she had been provided with accurate information on publication in the registration certificate.
In Societe Civile Succession Richard Guino v. Beseder Inc., 2009 WL 2497447 (D. Ariz. Aug. 13, 2009), the defendant made a motion to stay the determination of attorneys fees until the Court first inquired "whether the Register of Copyrights would have refused to copyright the works at issue if [she] had known of inaccurate information regarding the first date of publication contained in the copyright application pursuant to 17 U.S.C. Section 411."
A motion to stay is a last-ditch desperation shot. The district court shot it down.
Since I tend to root for the underdog, I have to point out that the district court's reasoning is flawed. In rejecting the motion, the district court reasoned that a finding of a "valid copyright" leads to an award of attorneys fees, and that if the Register said she wouldn't register, that would create an "irreconcilable conflict." The district court reasoned that this was a question "previously decided".
But just because a copyright is valid does not mean that attorneys fees are available for infringements. A failure to register disentitles a copyright plaintiff to attorneys fees and statutory damages.
You can have a valid copyright and no registration. And a valid copyright and no attorneys fees. Happens every day, as I advise many potential clients who have failed to register their copyrights.
If a copyright owner fails to register properly and promptly, statutory damages and attorneys fees are not available against an infringer.
Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys and gives the particulars.
Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.
If indeed the plaintiff made misrepresentations in obtaining a copyright registration, the defendants ought to read Fogerty v. Fantasy and its progeny and develop more nuanced arguments against an award of attorneys fees. In my Copyright Litigation Handbook I note the surprisingly unsettled area of law that is attorneys fees under the Copyright Act. There is much room for advocacy, the Circuits don't agree, and in a case that Prof. Patry called a "brain teaser," the defendants should not be tagged for full attorneys fees on litigating an unsettled or novel area of law if there was some degree of bad faith by plaintiff in registration.
But on the losing end of a case and getting whacked for attorneys fees, the adrenal glands have worked overtime, are blown out and it is tough to put in the time necessary to protect yourself. At the end of a hard-fought litigation, courts may be sympathetic to a party that really believed in its case. This is particularly true when your adversary is wealthier or has allowed himself to gloat. There are very serious cases declining to award attorneys fees, so a non-victorious party ought to marshal every factor possible to persuade a court to exercise its wide discretion in that party's favor.
Renoir Self-Portrait above.