Creazioni Artistiche Musicali, S.r.l. v. Carlin America, Inc., 1:14-cv-09270

Background

In 1966 composer Piero Umiliani executed a written agreement transferring broad rights in film music to Creazioni Artistiche Musicali (Plaintiff), including the right to transfer and reproduce the music worldwide.
Umiliani later composed "Mah Na Mah Na" (1968); Plaintiff alleges Mah Na Mah Na is virtually identical to two songs Umiliani composed under the 1966 Agreement.
Plaintiff sued Defendants Carlin America and Edward B. Marks Music Company for copyright infringement in 2014; the Court dismissed the complaint on December 30, 2016, holding under Italian law that Plaintiff lacked exclusive rights/standing to sue.
Defendants moved for attorney’s fees under 17 U.S.C. § 505; the motion was fully briefed and supplemented with a magistrate judge’s report in a related case.
The district court considered the Fogerty factors (objective reasonableness, frivolousness, motivation, compensation/deterrence) and whether awarding fees would further the Copyright Act’s goals.
The Court denied fees, finding Plaintiff’s positions (contract interpretation, choice of law, and Italian-law arguments) were not objectively unreasonable, frivolous, or pursued in bad faith; awarding fees would not further the Act’s purposes.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether prevailing defendants are entitled to attorneys' fees under the Copyright Act	Plaintiff’s suit was colorable: the 1966 Agreement conveyed broad rights and US law should apply; Italian-law defenses were debatable	Defendants argued Plaintiff’s claim lacked objective and legal basis and was frivolous or opportunistic, so fees are warranted	Denied: Plaintiff’s positions were not objectively unreasonable or frivolous and motives were not improper; fees would not advance the Copyright Act’s goals
Whether Plaintiff’s interpretation of the 1966 Agreement was objectively unreasonable	The contract's language conveyed all rights and permitted transfers, supporting standing	Defendants said the contract did not convey exclusive rights sufficient to sue	Held not objectively unreasonable; meaning required foreign-law analysis and was not clear-cut
Choice-of-law standard for an assignment of copyright	Plaintiff urged application of US law (lex loci delicti) which would favor Plaintiff	Defendants urged application of Italian law (most significant relationship), which the Court applied	Court found Plaintiff’s choice-of-law argument was reasonable given unsettled Second Circuit guidance; not objectively unreasonable
Whether bad-faith or deterrence justified fee award	Plaintiff denied improper motive and showed legitimate publishing business history; filed after Petrella clarified laches	Defendants alleged trolling and settlement leverage motives	Court found no evidence of trolling or bad faith; deterrence and compensation factors did not favor fees

Key Cases Cited

Fogerty v. Fantasy, 510 U.S. 517 (1994) (authorizes discretionary award of fees under Copyright Act and outlines multi-factor inquiry)
Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (2016) (directs courts to place substantial weight on objective reasonableness when awarding fees in copyright cases)
16 Casa Duse, LLC v. Merkin, 791 F.3d 247 (2d Cir. 2015) (lists Fogerty factors applied in Second Circuit)
Bryant v. Media Right Prods., Inc., 603 F.3d 135 (2d Cir. 2010) (Fogerty-factor discussion)
Itar-Tass Russian News Agency v. Russian Kurier, 153 F.3d 82 (2d Cir. 1998) (Second Circuit’s treatment of choice-of-law questions in copyright context)
Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679 (2d Cir. 1993) (applied U.S. law in a copyright dispute involving foreign contracts)
Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014) (abolished equitable laches defense in copyright actions)
Chambers v. NASCO, Inc., 501 U.S. 32 (1991) (standards for fee awards under a court’s inherent powers)