SIMPSON STRONG-TIE COMPANY INC., Plaintiff, v. MITEK INC., Defendant.
Case No. 20-cv-06957-VKD
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION
May 16, 2024
ORDER DENYING DEFENDANT‘S MOTION FOR ATTORNEY‘S FEES; DENYING MOTIONS TO SEAL. Re: Dkt. Nos. 200, 201, 204
VIRGINIA K. DEMARCHI, United States Magistrate Judge
The Court held a hearing on the motion on March 26, 2024. Dkt. No. 312. Upon consideration of the moving and responding papers, as well as the oral arguments presented, the Court declines to exercise its discretion to award attorney‘s fees under the Copyright Act and denies MiTek‘s motion. As such, it does not reach the parties’ additional arguments regarding the relationship of Simpson‘s claims and the reasonableness of MiTek‘s requested fee. The Court also
I. BACKGROUND
Simpson filed this action on October 6, 2020 challenging MiTek‘s alleged copying and use of the product names Simpson gives to its structural connectors. See Dkt. No. 1. The complaint asserted claims against MiTek for: (1) false advertising under the Lanham Act,
With respect to the copyright claim, Simpson alleged that MiTek infringed copyrights in its Wood Construction Connectors catalogs, and in particular, that MiTek copied its listing of part names in an “alphabetical product index” (“API“) within those catalogs. See Dkt. No. 1 ¶¶ 81-85. Initially, Simpson asserted that MiTek infringed its copyrights in 18 registered works—i.e. its catalogs from the years 2000 through 2020. See id. On February 4, 2021, MiTek moved to dismiss the copyright claim on the ground that the portions of the catalog that Simpson alleged MiTek has infringed—namely, the product names and the API—are not protectable works. Dkt. No. 23 at 9-12. The Court denied this motion on April 5, 2021. Dkt. No. 43 at 7-8.
On April 19, 2021, in response to MiTek‘s interrogatories, Simpson clarified that its infringement claim was limited to Simpson‘s two most recent catalogs. See Dkt. No. 200-5 at 20-21. Simpson also asserted that “Simpson‘s proprietary product names, including both the Simpson Part Names and Simpson Model Numbers, are protected elements of the two catalogs, as is the Alphabetical Product Index.” Id. at 21. After its corporate representative struggled to define the contours of the copyright claim during a Rule 30(b)(6) deposition, Simpson further clarified that its claim was limited to “new material” not included in prior catalogs. See Dkt. No. 200-6 at 5-6; Dkt. No. 200 at 5-6; Dkt. No. 203 at 4-5.
On September 20, 2022, the parties filed cross-motions for summary judgment regarding the copyright claim. Dkt. Nos. 70, 78. In its motion, Simpson defined its copyright claim even more narrowly:
Simpson‘s copyright claim is simply that (1) the asserted works are Simpson‘s 2017-18 and 2019-2020 catalogs; (2) each copyright registration for the asserted works extends only to new material in those catalogs from the most recent prior catalog; (3) the protectible portion of that new material at issue here is the Alphabetical Product Index in each asserted work; (4) the accused works are (a) MiTek‘s 59th edition of its product catalog (the “2018 MiTek Catalog“), (b) MiTek‘s 60th edition of its product catalog (the “2020 MiTek Catalog“), and (c) MiTek‘s Conversion Guide; and (5) and the similarities between the protectible portions of the asserted works and the accused works extend only to the Reference Number Index pages of the two catalogs and the entirety of the Conversion Guide.
Dkt. No. 88 at 27-28.
In its motion for summary judgment, MiTek again argued that the APIs and the product names listed within them are not protectable material, and that, in any event, the alleged copying was de minimis and therefore not infringing. Dkt. No. 75-1 at 23; Dkt. No. 99-3 at 21-28; Dkt. No. 110-3 at 10-15. The Court denied both parties’ motions, finding that “that triable questions of fact remain with respect to both the protectable elements of the APIs and the extent of the alleged copying by MiTek.” See Dkt. No. 121 at 22. Regarding MiTek‘s argument that the alleged copying was de minimis, the Court stated:
Even if the Court assumes that all of the new (or modified) product names in the APIs at issue are protectable expression, the protection that may be afforded these APIs as part of a derivative work is necessarily very thin. The Court finds persuasive MiTek‘s argument that any copying of the APIs that may be found in MiTek‘s Reference Number Indices or in its Conversion Guide is de minimis when viewed in comparison to the asserted works as a whole or even in comparison to the APIs as a whole. . . . However, considered in the light most favorable Simpson, the evidence raises a material question of fact precluding summary judgment regarding the extent of MiTek‘s copying of any protectable elements of the asserted works.
Id. at 21-22.
Following a bench trial, the Court issued findings of fact and conclusions of law in favor of MiTek on all of Simpson‘s claims. See Dkt. No. 193. With respect to the copyright claim, the Court concluded that “most of [Simpson‘s part names] have the minimal level of creativity
Copying is de minimis and therefore not actionable where the amount of the copying is so insubstantial in terms of quality or quantity that the accused work cannot be considered substantially similar to the asserted work. . . . Here, the quantity of copying is indeed minimal: 12 part names in a list of approximately 400 part names, arranged in alphabetical order, in an over 300-page catalog. The quality of the material copied is also minimal. The part names themselves are not source-identifying and the indices of part names are essentially functional; they serve to identify the page where a detailed description of the product corresponding to the part name may be found. And while Simpson is correct that product catalogs generally enjoy copyright protection, that protection is rather limited.
Id. at 38.
Additionally, the Court concluded that, even if MiTek‘s copying were actionable, it would constitute fair use. Id. at 39-40. The Court rejected MiTek‘s affirmative defenses of copyright misuse, statute of limitations, laches, and estoppel, waiver, or acquiescence. Id. at 40-45.
II. MITEK‘S MOTION FOR ATTORNEY‘S FEES
A. Legal Standard
The Copyright Act provides that “the court may . . . award a reasonable attorney‘s fee to the prevailing party” in an action for copyright infringement.
B. Discussion
The Court considers each of the applicable factors and concludes that while one factor favors an award of fees, the others do not. In the exercise of its discretion, the Court declines to award attorney‘s fees to MiTek.
1. Degree of Success
“[C]omplete success” on the merits—and not on a technical defense—weighs in favor of an award of attorney‘s fees. Tresóna Multimedia, LLC v. Burbank High Sch. Vocal Music Ass‘n, 953 F.3d 638, 653 (9th Cir. 2020). MiTek prevailed on the merits against Simpson at trial, with the Court concluding both that MiTek‘s copying was de minimis and therefore not actionable, and that MiTek had proven its affirmative defense of fair use. Dkt. No. 193 at 39-40. This factor weighs in favor of an award of attorney‘s fees, but it is not dispositive; prevailing parties in copyright cases are not entitled to attorney‘s fees as a matter of course. See Bisson-Dath v. Sony Computer Ent. Am. Inc., No. 08-cv-1235 SC, 2012 WL 3025402, at *1 (N.D. Cal. July 24, 2012) (citing Fogerty, 510 U.S. at 533).
2. Objective Reasonableness or Unreasonableness
The mere fact that Simpson lost does not establish its that its litigation position was objectively unreasonable. Seltzer v. Green Day, Inc., 725 F.3d 1170, 1181 (9th Cir. 2013).
“If a plaintiff has a claim that hinges on disputed facts sufficient to reach a jury, that claim necessarily is reasonable because a jury might decide the case in the plaintiff‘s favor.” VMG Salsoul, LLC v. Ciccone, 824 F.3d 871, 887 (9th Cir. 2016); see also Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1231 (9th Cir. 2008) (“[Plaintiff‘s] causes of action must be heard on the merits. So, regardless which party prevails, the District Court correctly found that [plaintiff‘s] claims were not in any way frivolous, unreasonable, or lacking in good faith.“).
Here, Simpson‘s copyright infringement claim was weak, but it was not objectively unreasonable. While MiTek prevailed on the merits at trial, the Court rejected MiTek‘s attempts to defeat Simpson‘s copyright claim on a motion to dismiss, see Dkt. No. 43 at 7-8, and at summary judgment, see Dkt. No. 121 at 18-22. These rulings reflect the Court‘s judgment that triable issues of fact existed and could be decided in Simpson‘s favor. See Atari Interactive, Inc. v. Redbubble, Inc., No. 18-cv-03451-JST, 2022 WL 7467297, at *2 (N.D. Cal. Sept. 12, 2022) (“It was not objectively unreasonable for [plaintiff] to have pursued its copyright claims to trial [after defendant‘s motion for summary judgment was denied.]“); Phoenix Techs. Ltd. v. VMware, Inc., No. 15-cv-01414-HSG, 2018 WL 828030, at *7 (N.D. Cal. Feb. 12, 2018) (“Even though the Court acknowledged [in its summary judgment ruling] that ‘Defendant‘s remaining affirmative defenses were substantial, and that it was far from certain that Plaintiff would be able to overcome them at trial,’ . . . the Court cannot say Plaintiff‘s claims were objectively unreasonable since they ‘hinged on disputed facts sufficient to reach a jury.‘“) (cleaned up); Erickson Prods. Inc. v. Kast, No. 13-cv-05472-HRL, 2016 WL 3951659, at *3 (N.D. Cal. July 22, 2016) (“[T]his court denied both sides’ respective summary judgment motions on infringement, concluding that there were materially disputed facts sufficient to permit that issue to proceed to a jury. [It] therefore declines to find that Kast‘s defense of this matter was objectively unreasonable.“); see also Skidmore v. Led Zeppelin, No. 15-cv-03462 RGK (AGRx), 2016 WL 6674985, at *2 (C.D. Cal. Aug. 8, 2016)
In its reply, MiTek cites two cases in which parties whose claims or defenses survived summary judgment, but lost at trial, were ordered to pay attorney‘s fees. Neither case supports an award here. In one of these cases, Unicolors Inc. v. NB Brother Corp., No. 16-cv-2268-MWF (JPRx), 2017 WL 5989041, at *1-2 (C.D. Cal. Nov. 13, 2017), the loser did not oppose the prevailing party‘s request for fees. In the other, Alchemist Evolution, LLC v. Smash, Inc., No. 10-cv-4445-SVW (SSx), 2011 WL 13217214, at *2 (C.D. Cal. Mar. 1, 2011), the court noted that the losing parties’ “conduct throughout this case ha[d] been objectively unreasonable” and had included discovery misconduct and advancing legal arguments contrary to pleadings. The court later reversed its attorney‘s fees decision as to one of the covered parties. Alchemist Evolution, LLC v. Smash, Inc., No. 10-cv-4445 SVW (SSx), 2011 WL 13217215 (C.D. Cal. June 24, 2011).
MiTek faults Simpson for initially asserting claims based on 18 registered works and accusing nearly every product name in hundreds of pages of MiTek‘s catalogs, before narrowing its claims to the two most recent catalogs, and eventually to the new material in the API in each of the two most recent catalogs. Dkt. No. 200 at 3-7. MiTek observes that Simpson continued to revise its copyright claim during discovery, see Dkt. No. 200 at 10-14, and some uncertainty about the exact scope of this claim persisted through trial, see Dkt. No. 193 at 38 (“During trial, Simpson did not specifically identify for the Court which new part names appeared in which of MiTek‘s accused works.“). Indeed, MiTek‘s strongest argument for fees is that Simpson‘s initial positions with respect to its copyright claim were unreasonable, even if the claim as presented during summary judgment and at trial was not. However, the fact a party‘s position changes during litigation does not necessarily imply that it is objectively unreasonable. See
With respect to the number of asserted works, while MiTek originally contended that Simpson “could not assert all 18 copyright registrations listed in its Complaint because the statute of limitations would preclude claims of infringement relating to its earlier registrations,” Dkt. No. 200 at 10-11, it later conceded that the statute of limitations did not bar Simpson‘s reliance on these asserted works in challenging MiTek‘s accused works, Dkt. No. 312 (hearing). Thus, it was not objectively unreasonable for Simpson initially to assert a copyright claim based on 18 registered works. In any event, on April 19, 2021, six-and-one-half months after the case was filed, Simpson served an interrogatory response limiting the claim to its two most recent catalogs.
With respect to Simpson‘s infringement allegations, Simpson further limited the scope of its claim to “new” Simpson product names found in the asserted works in an interrogatory response served on June 23, 2022, see Dkt. No. 200-6 at 5-6, before further narrowing its claim at summary judgment, see Dkt. No. 88 at 27-28. While in retrospect Simpson might have narrowed its claim earlier, MiTek has not made a persuasive showing that Simpson‘s litigation positions were objectively unreasonable or that it unduly delayed in narrowing its claim as the case progressed.
Accordingly, the Court concludes that this factor weighs against an award of attorney‘s fees to MiTek.
A claim is frivolous when its factual allegations are “‘clearly baseless,’ such as factual claims that are ‘fantastic or delusional scenarios.‘” Perfect 10, Inc. v. Visa Int‘l Serv. Ass‘n, No. 04-cv-00371 JW, 2005 WL 2007932, at *4 (N.D. Cal. Aug. 12, 2005) (quoting Neitzke v. Williams, 490 U.S. 324, 325-28 (1989)). While Simpson‘s copyright claim was not strong, it was not frivolous. This factor weighs against an award of attorney‘s fees.
4. Motivation
“The existence of bad faith or an improper motive in bringing or pursuing an action weighs in favor of an award of fees to a prevailing party.” Epikhin v. Game Insight N. Am., No. 14-cv-04383-LHK, 2016 WL 1258690, at *6 (N.D. Cal. Mar. 31, 2016) (quoting Frost-Tsuji Architects v. Highway Inn, Inc., No. 13-cv-00496 SOM/BMK, 2015 WL 5601853, at *7 (D. Haw. Sept. 23, 2015)). Apart from arguing that Simpson‘s litigation positions were unreasonable and/or frivolous—arguments the Court has rejected—MiTek does not suggest that Simpson acted in bad faith or with an improper motive. See Dkt. No. 200 at 14. This factor weighs against an award of attorney‘s fees.
5. Deterrence and Compensation
Fee awards should “encourage[] parties with strong legal positions to stand on their rights and deter[] those with weak ones from proceeding with litigation.” Kirtsaeng, 579 U.S. at 205. To this end, courts may award attorney‘s fees when plaintiffs press factually or legally baseless claims to deter others like them. E.g. Cobbler Nevada, LLC v. Gonzales, 901 F.3d 1142, 1149 (9th Cir. 2018) (affirming fee award when plaintiff lacked “a reasonable factual basis” to assert a claim against defendant); Shame On You Prods., Inc. v. Banks, 893 F.3d 661, 668 (9th Cir. 2018) (the purpose of deterrence is served by “awarding fees against a party who had litigated an objectively unreasonable claim, or who had brought a claim in bad faith“). “[A] court may [award fees] to deter repeated instances of copyright infringement or overaggressive assertions of copyright claims, . . . even if the losing position was reasonable in a particular case.” Kirtsaeng, 579 U.S. at 209. However, “plaintiffs acting in good faith and with potentially meritorious claims should not be deterred from seeking to protect their copyrights based on the fear of a large
As discussed above, the Court concludes that Simpson‘s claim was not objectively unreasonable, nor was it pursued in bad faith. The record also does not support a finding that Simpson‘s litigating positions were “overaggressive assertions of copyright claims,” such that a fee award is necessary to have an appropriate deterrent effect.” See Atari Interactive, 2022 WL 7467297, at *2 (quoting Kirtsaeng, 579 U.S. at 209). MiTek argues that the parties are “competitors and frequently engaged in competitive litigation,” see Dkt. No. 200 at 14, but it does not contend that Simpson “has previously filed non-meritorious actions” or engaged in other abusive conduct outside this litigation, such that a fee award is necessary for the purposes of specific deterrence. Shame On You Prods., Inc. v. Banks, No. 14-cv-03512-MMM (JCx), 2016 WL 5929245, at *10 (C.D. Cal. Aug. 15, 2016), aff‘d, 893 F.3d 661, 665-69 (9th Cir. 2018); see also Epikhin, 2016 WL 1258690, at *8 (no specific deterrence required when court “[did] not believe that Plaintiffs will attempt to re-assert [unsuccessful] copyright infringement claims“).
Accordingly, the Court concludes that this factor weighs against an award of attorney‘s fees to MiTek.
6. Purposes of the Copyright Act
“[C]opyright law ultimately serves the purpose of enriching the general public through access to creative works.” Fogerty, 510 U.S. at 527. “To this end, copyright assures authors the right to their original expression, but encourages others to build freely upon the ideas and information conveyed by a work.” Id. (quoting Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349-50 (1991)). While “the guiding principles of the Copyright Act run throughout the other factors,” the Ninth Circuit has long held that district courts must consider it
MiTek argues that its defense of this lawsuit served the purposes of the Act by helping to “establish the boundaries of copyright law.” Dkt. No. 307 at 10. As it is “important that the boundaries of copyright law be demarcated as clearly as possible,” advancing litigation positions which help to define those boundaries serves the Act‘s purposes. Fogerty, 510 U.S. at 527. MiTek does not identify any particularly significant copyright issues addressed by this case, nor does it explain how the litigation contributed to “an informed discussion on the demarcation of copyright law.” Williams v. Bridgeport Music, Inc., No. 13-cv-06004-JAK (AGRx), 2016 WL 6822309, at *4 (C.D. Cal. Apr. 12, 2016), aff‘d, 895 F.3d 1106, 1132 (9th Cir. 2018). Indeed, it is not clear whether MiTek has a better claim to demarcating the boundaries of copyright law than Simpson. Id. (quoting Schiffer Publ‘g, Ltd. v. Chronicle Books, LLC, No. 03-cv-4962, 2005 WL 1244923, at *4 (E.D. Pa. May 24, 2005)) (“Because reasonable, though losing, litigation positions define the precise boundaries of copyright law, parties who advance such positions should not be punished by the imposition of fees.“).
MiTek also argues that “because de minimis use, like fair use, lies at the heart of copyright law, success on the de minimis use doctrine also serves” the Act‘s purposes. Dkt. No. 307 at 10. The Ninth Circuit has observed that “[w]hen a fee award encourages a defendant to litigate a meritorious fair use claim against an unreasonable claim of infringement, the policies of the Copyright Act are served.” SOFA Ent., 709 F.3d at 1280. On this point, the Court agrees with MiTek that litigating a meritorious fair use defense does indeed promote the interests protected by the Copyright Act, but at the same time, Simpson‘s claim was not objectively unreasonable.
Accordingly, the Court concludes that this factor weighs against an award of attorney‘s fees to MiTek.
* * *
While the degree of success factor favors MiTek, all of the other relevant factors weigh against an award of an attorney‘s fees. In particular, the Court‘s determination, drawing on its rulings on MiTek‘s motion to dismiss and motion for summary judgment, that Simpson‘s claim and arguments were not objectively unreasonable strongly weighs against fee-shifting. MiTek
III. SEALING MOTIONS
MiTek and Simpson have both filed administrative motions to seal MiTek‘s attorney‘s billing records. Both motions concern the same documents: MiTek filed its attorneys’ billing records in support of its motion for attorney‘s fees (Dkt. No. 201); Simpson filed MiTek‘s billing records, with annotations, as exhibits to its opposition (Dkt. No. 204). MiTek contends that the billing records contain: (1) information covered by the attorney work product doctrine; (2) information that may affect future litigation or negotiations between the parties in related matters; and (3) sensitive fee information that could be exploited by its law firm‘s competitors. Dkt. No. 201 at 3-4.
Because a motion for attorney‘s fees does not implicate the merits of either party‘s claims or defenses, the parties need only to show “good cause” for them to be sealed. See Kamakana v. City & Cnty. of Honolulu, 447 F.3d 1172, 1179-80 (9th Cir. 2006); Richter v. Oracle Am., Inc., No. 22-cv-04795-BLF, 2023 WL 5663217, at *1 (N.D. Cal. Aug. 30, 2023). Generally, attorney billing records will not be sealed absent a showing of specific prejudice or harm. See, e.g., Grouse River Outfitters Ltd. v. Oracle Corp., No. 16-cv-02954-LB, 2019 WL 8752333, at *2 (N.D. Cal. Sept. 27, 2019) (“Oracle has not shown ‘good cause’ for sealing its counsel‘s billing rates and invoices.“); Aylus Networks, Inc. v. Apple Inc., No. 13-cv-04700-EMC, 2016 WL 1252778, at *2 (N.D. Cal. Mar. 30, 2016) (“[T]he number of hours spent litigating a case and billing rates are not considered proprietary information.“); Muench Photography, Inc. v. Pearson Educ., Inc., No. 12-cv-01927-WHO, 2013 WL 6698465, at *2 (N.D. Cal. Dec. 18, 2013)
The billing records here do not appear to merit different treatment. MiTek has not established that any records disclose attorney work product. Its claim that public disclosure of these records would harm it in other litigation with Simpson is also unsupported. The Court notes that MiTek filed unredacted versions of the billing records it now seeks to seal on the public docket at Dkt. Nos. 200-15 through 200-18. The Court advised MiTek of this public filing during the hearing on March 26, 2024, but MiTek has taken no action to have those documents removed from the public docket. Dkt. No. 312. Moreover, while retainer agreements may sometimes contain sensitive or privileged information, attorneys’ billing rates and hours worked generally do not warrant sealing. See Grouse River Outfitters, 2019 WL 8752333, at *2 (collecting cases where sealing of billing records was denied); K.H. by & through Humphrey v. Antioch Unified Sch. Dist., No. 18-cv-07716 WHA, 2020 WL 4218036, at *1 (N.D. Cal. July 9, 2020) (allowing for sealing of retainer agreement, but denying request to seal billing records in total).
Accordingly, the Court denies the parties’ administrative motions to seal and directs the Clerk‘s Office to unseal the provisionally sealed documents at Dkt. Nos. 201-1 through 201-4 and 204-2 through 204-5. As noted above, these records already appear separately on the public docket.
IV. CONCLUSION
For the foregoing reasons, MiTek‘s motion for attorney‘s fees is denied. The parties’ administrative motions to seal are also denied.
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Dated: May 16, 2024
VIRGINIA K. DEMARCHI
United States Magistrate Judge