Tempest Publishing, Inc. v. Hacienda Records & Recording Studio, Inc.
141 F. Supp. 3d 712
| S.D. Tex. | 2015Background
- Tempest Publishing sued Hacienda (three related entities) for copyright infringement of four songs; court granted partial summary judgment dismissing two songs and directed verdict for Hacienda on a third, leaving one song (Somos Dos Gatos) for trial.
- After a bench trial, court found Hacienda willfully infringed the copyright in Somos Dos Gatos and awarded Tempest $5,000.
- Judgment entered on March 18, 2015; both parties filed competing motions for costs under 17 U.S.C. § 505 and 28 U.S.C. § 1920; Tempest later filed an untimely amended bill of costs.
- Central legal questions: (1) who is the prevailing party for purposes of costs (Rule 54(d)(1) and § 505), (2) whether § 505’s “full costs” allows recovery beyond § 1920 taxable costs, and (3) what costs, if any, should be awarded and whether they should be reduced because Tempest prevailed on only one of four claims.
- Court held Tempest is the prevailing party, § 505 does not authorize recovery beyond § 1920 costs (so limited to taxable costs), denied Tempest’s amended (untimely) bill, awarded taxable deposition/transcript and copying costs, then reduced the award by 50% for partial success, totaling $7,701.35.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who is the prevailing party for costs? | Tempest: judgment for infringement on Somos Dos Gatos makes Tempest the prevailing party. | Hacienda: both sides won on different claims; Hacienda is also a prevailing party or costs should be apportioned. | Tempest is the prevailing party under Rule 54(d)(1) and § 505; only one prevailing party as between plaintiff and defendant. |
| Does § 505 permit "full costs" beyond § 1920? | Tempest: § 505’s phrase “full costs” authorizes nontaxable costs beyond § 1920. | Hacienda: § 1920 is the specific statutory list of taxable costs and limits recoverable costs. | § 505 does not clearly override § 1920; following Crawford Fitting and circuit authority, costs are limited to those in § 1920. |
| Are Tempest’s specific requested items taxable? | Tempest: seeks deposition transcripts, copying/printing, Copyright Office certified copies, service fees, travel, messengers, research, etc. | Hacienda: objects to non-§1920 items and argues some depositions unrelated to the winning claim. | Taxable: deposition transcripts, copying/printing, Copyright Office exemplification. Non-taxable: service/summons fees, travel, meals, faxes, messenger, research. Court awarded §1920 items. |
| Should award be reduced because partial success? | Tempest: seeks full taxable costs. | Hacienda: costs should be dramatically reduced (pro rata by claims or sales) given Tempest prevailed on only one of four claims. | Court exercised discretion, reduced taxable costs by 50% to reflect limited success. |
Key Cases Cited
- Crawford Fitting Co. v. J.T. Gibbons, Inc., 482 U.S. 437 (1987) (28 U.S.C. § 1920 is the specific statutory list of taxable costs; courts should not exceed it absent clear congressional intent)
- Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598 (2001) (prevailing-party status requires a judicially sanctioned change in the legal relationship)
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (prevailing plaintiffs and defendants should be treated alike under copyright fee-shifting)
- Farrar v. Hobby, 506 U.S. 103 (1992) (degree or amount of damages generally does not determine prevailing-party status; success on merits of some claims suffices)
- Twentieth Century Fox Film Corp. v. Entm’t Distrib., 429 F.3d 869 (9th Cir. 2005) (held § 505 may permit non-§1920 costs)
- Pinkham v. Camex, Inc., 84 F.3d 292 (8th Cir. 1996) (held § 505 costs limited to § 1920 items)
- Artisan Contractors Ass’n of Am., Inc. v. Frontier Ins. Co., 275 F.3d 1038 (11th Cir. 2001) (adopted § 1920 limitation on § 505 costs)
- Cheatham v. Allstate Ins. Co., 465 F.3d 578 (5th Cir. 2006) (strong presumption in favor of awarding costs to prevailing party under Rule 54(d)(1))
- Stearns Airport Equip. Co. v. FMC Corp., 170 F.3d 518 (5th Cir. 1999) (deposition costs taxable under § 1920 when necessarily obtained for use in the case)