SAS Institute Inc. v. World Programming Limited
5:10-cv-00025-FL
E.D.N.C.Jul 15, 2016Background
- SAS developed the SAS System and a functionally limited SAS Learning Edition sold under a license restricting use to non-production purposes and prohibiting reverse engineering; both interpret the SAS Language.
- World Programming Ltd. (WPL) purchased the Learning Edition after SAS refused a full license, used it to develop its World Programming System (WPS), and incorporated a "golden result" testing framework that depended on Learning Edition outputs.
- SAS sued in the U.K. and in the Eastern District of North Carolina asserting multiple claims, including a copyright "software" claim based on use of the SAS Language; U.K. courts rejected SAS’s position under EU-specific law.
- In E.D.N.C., the court granted summary judgment to WPL on SAS’s software copyright claim but found SAS liable on its breach of the Learning Edition license; several claims proceeded to trial (fraud, UDPA, license damages), and the jury awarded large damages to SAS.
- WPL moved for attorneys’ fees under 17 U.S.C. § 505 for the defeated software claim, seeking roughly $760,721.59; SAS opposed as untimely and on the merits.
- The court denied the fee motion, holding it was timely but declining to exercise equitable discretion to award fees because WPL’s fraudulent acquisition of the Learning Edition weighed against a fee award despite the objective unreasonableness of SAS’s software claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Timeliness of fee motion | Fee motion untimely because filed >14 days after Oct. 16, 2015 judgment | Timely because post-judgment Rule 50(b) motion interrupted finality; 14-day clock restarted after disposition | Motion timely — Rule 50(b) interrupted finality; filing within renewed 14-day period |
| Whether WPL is prevailing party on the software claim | SAS implicitly contends it was not liable on other claims; fees should be limited or denied | WPL prevailed on the software (copyright) claim and is entitled to fees as prevailing party under § 505 | WPL is the prevailing party on the software claim (first-step satisfied) |
| Whether fees should be awarded in the court’s equitable discretion | SAS: deny fees; WPL’s wrongdoing and other factors weigh against fees | WPL: SAS’s software claim was objectively unreasonable or brought in bad faith, justifying fees | Fees denied — court declines to exercise discretion for fees because (1) WPL’s fraud in obtaining Learning Edition is an overriding adverse factor and (2) SAS’s conduct was not shown to be subjectively in bad faith despite objective unreasonableness |
| Reasonableness of claimed fee amount | SAS argued claimed amount is unreasonable (if fees were awarded) | WPL submitted detailed bills and UK fees; sought full recovery (~$760k) | Court did not reach fee-reasonableness analysis because it denied fees on equitable grounds |
Key Cases Cited
- Weyant v. Okst, 198 F.3d 311 (2d Cir. 1999) (post-judgment motions can interrupt finality for appeal/timing purposes)
- Miltimore Sales, Inc. v. Int’l Rectifier, Inc., 412 F.3d 685 (6th Cir. 2005) (rule that post-judgment motions restart fee-filing period)
- Members First Fed. Credit Union v. Members First Credit Union, 244 F.3d 806 (11th Cir. 2001) (same principle on timing of fee motions)
- Roque-Rodriguez v. Lema Moya, 926 F.2d 103 (1st Cir. 1991) (post-judgment motions affect finality and toll timing)
- Caperton v. Beatrice Pocahontas Coal Co., 585 F.2d 683 (4th Cir. 1978) (discussing finality and timing issues post-judgment)
- Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503 (4th Cir. 1994) (three-step framework for awarding copyright attorneys’ fees)
- Barber v. Kimbrell’s, Inc., 577 F.2d 216 (4th Cir. 1978) (factors for assessing fee reasonableness)
- Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (2016) (objective reasonableness is an important but not controlling factor in fee awards)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (equitable discretion governs copyright fee awards; multi-factor test)
- InvesSys, Inc. v. McGraw-Hill Cos., 369 F.3d 16 (1st Cir. 2004) (fees may be based on issues related to the copyright claim)
- Myers & Chapman, Inc. v. Thomas G. Evans, Inc., 323 N.C. 559 (N.C. 1988) (definition of fraud under North Carolina law)