Humphreys & Partners Architects, L.P. v. Lessard Design, Inc.

• Decision Date: 13 November 2015
• Docket Number: Case No. 1:13–cv–433.
• Citation: 117 U.S.P.Q.2d 1669,152 F.Supp.3d 503
• Court: U.S. District Court — Eastern District of Virginia
• Parties: HUMPHREYS & PARTNERS ARCHITECTS, L.P., Plaintiff, v. LESSARD DESIGN, INC., et al., Defendants.

152 F.Supp.3d 503

117 U.S.P.Q.2d 1669

HUMPHREYS & PARTNERS ARCHITECTS, L.P., Plaintiff,

v.LESSARD DESIGN, INC., et al., Defendants.

Case No. 1:13–cv–433.

United States District Court, E.D. Virginia, Alexandria Division.

Signed Nov. 13, 2015.

Tara Lynn Renee Zurawski, Jones Day, Washington, DC, for Plaintiff.

Christopher P. Foley, Finnegan Henderson Farabow Garrett & Dunner LLP, Reston, VA, Antigone Gabriella Peyton, Cloudigy Law PLLC, McLean, VA, for Defendants.

MEMORANDUM OPINION

T.S. ELLIS, III, District Judge.

At issue post-judgment and post-appeal in this copyright infringement case is defendants' claim for attorney's fees and costs pursuant to Section 505 of the Copyright Act of 1976, which provides that “the Court in its discretion may allow the recovery of full costs” and “reasonable attorney's fees to the prevailing party.” 17 U.S.C. § 505. This dispute arises from plaintiff's recent copyright infringement suit, which, in the end, was resolved by entry of summary judgment in favor of defendants. Plaintiff's appeal failed as the Court of Appeals for the Fourth Circuit affirmed the grant of summary judgment. See Humphreys & Partners Architects, L.P. v. Lessard Design, Inc., 790 F.3d 532, 543 (4th Cir.2015). Now at bar are defendants' fee claims, which plaintiff disputes, raising the following issues:

(1) whether any award for attorney's fees and costs is appropriate here;

(2) whether the fees claimed by defendants are reasonable in the circumstances;

(3) whether defendants should recover the taxable costs they seek; and

(4) whether defendants should recover the non-taxable costs they seek.

I.

Plaintiff Humphreys & Partners Architects, L.P. is a Texas limited partnership that designs multi-family residential buildings. The eight defendants still remaining in this case fall into three groups: (1) the Lessard defendants, (2) the Penrose defendants, and (3) the Northwestern defendants.¹ Another defendant, Clark Builders Group, LLC, initially moved for attorneys fees, but withdrew that motion after reaching an agreement with plaintiff with respect to fees.

In 2000 and 2001, plaintiff designed a high-rise residential tower known as Grant Park, which it registered as an architectural work with the United States Copyright Office in 2003. Thereafter, in 2004, the Grant Park building was constructed in Minneapolis, Minnesota. Grant Park is a 27–story condominium building that contains 11 units per floor. The building has two separate elevator cores, and each floor has two elevator lobbies. On a typical floor, about half the units open directly into one lobby and the other half open directly into the other lobby. Each lobby also provides access to a stairwell and to a trash chute or to a mechanical room. An unfinished service corridor connecting the lobbies allows residents to access both utility rooms and both stairwells. The dual-core layout eliminates the need for a finished central hallway and is intended to promote a sense of community among the units sharing a lobby.

In 2008, the Penrose defendants began developing a high-rise apartment building known as Two Park Crest for construction in McLean, Virginia. In 2010, the Penrose defendants solicited design proposals from three architecture firms, including plaintiff and the Lessard defendants. In September and October 2010, plaintiff submitted illustrations of its Grant Park design and then met with the Penrose defendants to discuss the design.

On November 3, 2010, the Penrose defendants informed the Lessard defendants that they wanted the Two Park Crest design to feature dual elevator cores connected by a service corridor and emailed the Lessard defendants the Grant Park floorplan to illustrate the concept. Shortly thereafter, on November 15, the Lessard defendants emailed the Penrose defendants a preliminary sketch of a design with two elevator cores. In response, the Penrose defendants indicated that the design was consistent with their request. The Lessard defendants ultimately submitted a design for a 19–story building with 17 units per floor that incorporated three elevator cores—two passenger elevator cores and a service elevator core. On a typical floor, about half of the units would open directly into each passenger elevator lobby.

On November 17, 2010, the Penrose defendants informed plaintiff that they had hired the Lessard defendants to design the Two Park Crest project. The Penrose defendants subsequently sold the project to the Northwestern defendants. In November 2011, the Northwestern defendants hired the Clark Builders Group to construct Two Park Crest, and in January 2012, the Clark Builders Group began constructing the building.

In April 2013, plaintiff filed an action against the defendants under 17 U.S.C. § 101 et seq., alleging one count of copyright infringement against each defendant. Following discovery, the parties filed cross-motions for summary judgment. Defendants argued that they were not liable to Humphreys because, inter alia, they did not copy the Grant Park design and the two designs were not substantially similar. Defendants supported their motions with expert reports filed by three architects, who concluded that the two designs were not substantially similar.

In response, plaintiff argued that the Lessard defendants copied the Grant Park design after receiving that design from the Penrose defendants. Plaintiff claimed that the speed with which the Lessard defendants created the Two Park Crest design was direct evidence of copying and that the similarities between the two designs was circumstantial evidence of copying. Plaintiff supported its claim that the two designs are substantially similar with a declaration from an expert, who identified nine features shared by both designs.² Plaintiff argued that the presence and arrangement of these nine features in Two Park Crest infringed plaintiff's copyright in the Grant Park design.

On September 2, 2014, defendants' motions for summary judgment were granted on the grounds that: (i) there was no direct evidence of copying, and (ii) no reasonable jury could find that the Grant Park and Two Park Crest designs are extrinsically similar. An Order and Memorandum Opinion issued, holding that the two designs were not extrinsically similar for two independently sufficient reasons: (i) neither the nine features nor their arrangement in Grant Park were eligible for copyright protection; and (ii) those nine features were presented and arranged differently in the Two Park Crest design. Humphreys & Partners Architects, L.P. v. Lessard Design, Inc., 43 F.Supp.3d 644, 670–79 (E.D.Va.2014). In regard to the arrangement of the nine features in the two designs, defendants' experts explained how the two designs differed with respect to their size, footprints, floorplans, and exterior appearances. Plaintiff's expert, in contrast, offered no evidence that the two arrangements were extrinsically similar. As a result of the extrinsic similarity analysis, defendants were awarded summary judgment. Plaintiff timely appealed, and on June 23, 2015, the Fourth Circuit panel unanimously affirmed the decision. See Humphreys, 790 F.3d at 543.

Promptly thereafter, each of the defendant groups moved to recover full costs and reasonable attorney's fees. The Clark Builders Group withdrew its motion after it entered into an undisclosed agreement with Humphreys. Thus, the Lessard defendants, the Northwestern defendants, and the Penrose defendants remain as parties seeking recovery of attorney's fees and full costs.

The Lessard defendants seek $1,403,121.60 in attorney's fees and $463,530.91 in full costs.³ The Penrose defendants seek $990,995.00 in attorney's fees and $144,292.00 in full costs.⁴ The Northwestern defendants seek $246,775.00 in attorney's fees and 7,093.50 in taxable costs.

II.

The Copyright Act of 1976 provides, in pertinent part, that in any copyright infringement action “the court in its discretion may allow the recovery of full costs” and “may also award reasonable attorney's fees to the prevailing party.” 17 U.S.C. § 505. By its terms, Section 505 does not mandate an automatic fee award to the prevailing party in every case. Fogerty v. Fantasy, Inc., 510 U.S. 517, 534, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). Rather, the decision whether to award recovery is committed to the discretion of the trial court. See Hensley v. Eckerhart, 461 U.S. 424, 436–37, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983). The fee applicant bears the burden of establishing its entitlement to a fee award. See id.

III.

Analysis properly begins by considering whether defendants are prevailing parties, and therefore eligible to recovery attorney's fees and costs pursuant to Section 505. Plaintiff does not dispute that the Penrose defendants and the Northwestern defendants are prevailing parties, but plaintiff does dispute that the Lessard defendants share that status. Specifically, plaintiff contends that the Lessard defendants are not prevailing parties because the Lessard defendants lost on a counterclaim in the underlying dispute.

Plaintiff's argument fails because plaintiff sets the bar too high, as a prevailing party need not be a completely prevailing party. In this respect, the Supreme Court has defined “prevailing party” as “a party in whose favor a judgment is rendered, regardless of the amount awarded” Buckhannon Bd. & Care Home, Inc. v. W.Va. Dep't of Health & Human Res., 532 U.S. 598, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001) (quoting Black's Law Dictionary 1145 (7th ed.1999)).⁵ A party “may be considered [a] ‘prevailing part[y]’ for attorney's fees purposes if [it] succeed[s] on any significant issue in litigation which achieves some of the benefit the part[y] sought in bringing suit.” Farrar v. Hobby, 506 U.S. 103, 109, 113 S.Ct. 566, 121 L.Ed.2d 494 (1992). Importantly, a defendant's failed counterclaim does not alter the defendant's status as a prevailing party. See Dennis v. Columbia Colleton Med. Ctr., Inc., 290 F.3d 639, 652 (4th Cir....