Jovani Fashion, Ltd. v. Cinderella Divine, Inc.
2011 U.S. Dist. LEXIS 122660
S.D.N.Y.2011Background
- Jovani, a dress designer, sued Fiesta and others in SDNY alleging copyright, Lanham Act, and state unfair competition claims arising from alleged infringing dresses.
- Fiesta moved to dismiss; the court granted dismissal of Fiesta on the theory that Jovani's only claimed design was not protectable because elements were not separable from the dress as a whole.
- After dismissal, Fiesta sought costs and attorney's fees under § 505 of the Copyright Act and § 1117(a) of the Lanham Act for the defense.
- Total fees and costs sought by Fiesta: $37,800.85 and related sums for the current motion; Jovani did not challenge reasonableness of rates or hours.
- The court held precedents require equitable discretion under § 505 and considered Fogerty factors, ultimately denying both § 505 fees/costs and Lanham Act fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 505 awards are warranted | Fiesta seeks costs and fees as prevailing party under § 505. | Prevailing parties may recover under § 505; but must show reasonable, non-frivolous claims and deter misconduct. | Denied |
| Were Jovani's claims objectively unreasonable | Registration for style #154416 support made the claim reasonable. | Separability analysis made the claims close but not clearly frivolous. | Not objectively unreasonable; court rejected fee award |
| Is there a deterrence/compensation rationale justifying fees given the case’s posture | Plaintiff’s litigation position merited deterrence due to close, meritorious claims. | Not warranted; case involved close questions and allowed meritorious defense without misconduct. | Weighing factors disfavor fees |
| Whether Lanham Act fees are warranted for withdrawn claims | If exceptional, still possible despite withdrawal. | Withdrawal of Lanham Act claims reduces burden; not an exceptional case. | Denied |
| Overall method of fee discretion under Fogerty framework | Fogerty supports fee shifting for prevailing party as equitable remedy. | Fogerty factors weigh against awarding here; objective reasonableness substantial weight. | Discretion exercised to deny both § 505 and Lanham Act fees |
Key Cases Cited
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (U.S. 1994) (prevailing parties may be awarded attorney's fees discretionary; factors guide discretion)
- Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98 (2d Cir. 2002) (fees are not automatic; district court discretionary)
- Silberstein v. Fox Entm't Grp., Inc., 536 F.Supp.2d 440 (S.D.N.Y.2008) (claims must not be clearly without merit to be unreasonable)
- Bryant v. Media Right Productions, Inc., 603 F.3d 135 (2d Cir. 2010) (objective unreasonableness given substantial weight in Fogerty analysis)
- Crown Awards, Inc. v. Discount Trophy & Co., Inc., 564 F.Supp.2d 290 (S.D.N.Y.2008) (presumptive entitlement to fees in small-stakes copyright cases)
- Assessment Techs. of WI, LLC v. WIREdata, Inc., 361 F.3d 434 (7th Cir.2004) (preserves discussion of deterrence; not adopted in Fogerty framework)
- Matthew Bender & Co., Inc. v. West Publ'g Co., 240 F.3d 116 (2d Cir.2001) (case discussion on deterrence and meritorious defenses in close cases)