Victoria Ryan v. Editions Limited West, Inc.
786 F.3d 754
9th Cir.2015Background
- Victoria Ryan (artist) licensed poster rights to Editions Limited West, Inc. (ELW) under a contract that included a prevailing-party attorney-fees clause.
- Ryan sued ELW alleging contributory and vicarious copyright infringement for facilitating third-party derivative works (canvas transfers, giclées, murals) beyond the poster license; initial summary judgment largely favored ELW but Ninth Circuit reversed as to infringement and remanded limited issues.
- On remand a bench trial was held on infringement liability, injunctive relief, and whether Ryan was the prevailing party under the contract; the district court found Ryan liable on contributory infringement, awarded injunctive relief, and found her the prevailing party.
- Ryan sought $328,077.50 in attorney fees under the contract; the district court awarded $51,363.81 after (1) categorically excluding most fee categories, (2) applying a 75% pro rata reduction for limited success, and (3) an additional 20% cut for block billing/interest.
- ELW appealed arguing the Copyright Act preempts contractual fee awards and challenged various rulings; Ryan cross-appealed the fee calculation and denials of sanctions and leave to amend. Ninth Circuit affirmed most rulings but vacated the fee award and remanded for adequate explanation and recalculation.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Copyright Act preempts enforcement of a contractual attorney-fees clause in copyright litigation | Ryan: Contract clause enforcible; contract creates an extra element making it qualitatively different from copyright rights | ELW: Enforcing clause awards an additional remedy tied to copyright and conflicts with §412’s registration policy | Not preempted: contract-based fee-shifting is outside §301(a) and does not conflict with Copyright Act here (contracting parties aware of rights) |
| Judicial estoppel — whether Ryan is barred from seeking contractual fees after conceding no recovery under Copyright Act | Ryan: Never abandoned contract claim; consistently sought contractual fees | ELW: Prior concessions inconsistent and should bar fee request | No abuse of discretion: no clear inconsistent positions to justify estoppel |
| Adequacy of district court’s fee calculation and reductions (categorical exclusions, pro rata apportionment, 20% block-billing cut) | Ryan: Fees were related/interrelated to infringement claim; reductions were arbitrary and unexplained | ELW: Substantial reductions justified by limited success and unrelated tasks | Abused discretion: court erred by mechanically excluding entire categories, improperly applying pro rata reduction, and making unexplained 20% cut; remand for detailed, justified recalculation |
| Denial of sanctions for spoliation and denial of leave to amend (fraud claim); exclusion of damages issue at trial | Ryan: Evidence of spoliation; trial testimony warranted amendment to add fraud; damages should be retried | ELW: No spoliation prejudice; amendment untimely and prejudicial; damages already resolved | Affirmed: district court did not abuse discretion—no spoliation showing/prejudice, undue delay and prejudice justified denying amendment, and mandate did not reopen damages issue |
Key Cases Cited
- Hensley v. Eckerhart, 461 U.S. 424 (1983) (lodestar method; reduce fees for limited success)
- Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079 (9th Cir. 2005) (contractual rights often are qualitatively different from copyright)
- Moreno v. City of Sacramento, 534 F.3d 1106 (9th Cir. 2008) (deference to counsel’s judgment on hours; need for more detailed explanation for large reductions)
- Welch v. Metropolitan Life Insurance Co., 480 F.3d 942 (9th Cir. 2007) (district court may adjust for block billing but must explain percentage reductions)
- Foad Consulting Group, Inc. v. Azzalino, 270 F.3d 821 (9th Cir. 2001) (state law not preempted unless it conflicts with Copyright Act)
- Ryan v. Editions Ltd. W., Inc., [citation="417 F. App'x 699"] (9th Cir. 2011) (earlier appeal reversing summary judgment on infringement and limiting remand issues)