Gonzales v. Transfer Technologies, Inc.

Decision Date23 August 2002
Docket NumberNo. 01-4090.,01-4090.
Citation301 F.3d 608
PartiesDavid B. GONZALES, Plaintiff-Appellant, v. TRANSFER TECHNOLOGIES, INC., Defendant-Appellee.
CourtU.S. Court of Appeals — Seventh Circuit

Edward G. Wierzbicki, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, Chicago, IL, Maurice U. Cahn, Cahn & Samuels, Washington, DC, for Plaintiff-Appellant.

Before POSNER, KANNE, and EVANS, Circuit Judges.

POSNER, Circuit Judge.

Gonzales owns copyrights on several designs intended to be imprinted on T-shirts. Without bothering to get a license from him the defendant produced and sold temporary tattoos that copy his designs, infringing four of his copyrights. When he discovered the infringements he sued the defendant, which promptly stopped producing and selling the infringing tattoos. By agreement of the parties the case was submitted to the judge on a paper record. He awarded Gonzales the minimum statutory damages of $750 (see 17 U.S.C. § 504(c)(1)) for each of the infringed copyrights, for a total of $3,000 (Gonzales did not seek an award of actual damages), but he declined to award Gonzales any attorneys' fees (see 17 U.S.C. § 505), on the ground that "Transfer's actions, though willful, are not the kind of flagrant behavior that would justify an award of attorneys' fees." Gonzales appeals from this ruling.

Section 505 of the Copyright Act does not set forth a standard for awarding attorneys' fees to a prevailing party; it merely authorizes such awards. In Fogerty v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994), the Supreme Court was asked to align interpretation of section 505 with that of the civil rights attorneys' fees awards act, 42 U.S.C. § 1988, under which a prevailing plaintiff is entitled to fees virtually as a matter of course but a prevailing defendant only if the suit is frivolous. E.g., Christiansburg Garment Co. v. EEOC, 434 U.S. 412, 422, 98 S.Ct. 694, 54 L.Ed.2d 648 (1978); Khan v. Gallitano, 180 F.3d 829, 837 (7th Cir. 1999); National Home Equity Mortgage Ass'n v. Face, 283 F.3d 220, 224 (4th Cir. 2002). The Court in Fogerty refused, reasoning that copyright defenses are as important as copyright claims (a successful defense enlarges the public domain, an important resource for creators of expressive works) and therefore there should be no thumb on the scales. It did not define the unitary standard to be applied to prevailing parties in copyright suits but in a footnote, quoting a lower-court opinion, listed the following nonexclusive factors to guide determination: "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance consideration of compensation and deterrence." Fogerty v. Fantasy, Inc., supra, 510 U.S. at 535 n. 19.

Since the factors aren't exclusive, and seem rather miscellaneous and ill-assorted, they leave the decision on whether to grant or deny attorneys' fees to the prevailing party in a copyright case pretty much to the discretion of the district judge, subject to necessarily highly deferential appellate review — for the vaguer a standard to be applied by a trial judge, the greater his roaming room. But we do have to insist that the judge explain the grounds for his decision in sufficient depth to enable their reasonableness to be determined; otherwise there would be no appellate control at all over such decisions. And so we have not hesitated in the past to remand section 505 determinations when the district judge had not supplied us with sufficient indication of his reasoning process to enable us to decide whether the determination was reasonable. Susan Wakeen Doll Co., v. Ashton-Drake Galleries, 272 F.3d 441, 457-58 (7th Cir.2001); Harris Custom Builders, Inc. v. Hoffmeyer, 140 F.3d 728, 730-31 (7th Cir.1998); FASA Corp. v. Playmates Toys, Inc., 108 F.3d 140, 144 (7th Cir.1997); Budget Cinema, Inc. v. Watertower Associates, 81 F.3d 729, 731-32 (7th Cir.1996); Magnuson v....

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  • Roger Whitmore's Auto. v. Lake County, Il
    • United States
    • U.S. Court of Appeals — Seventh Circuit
    • 22 Septiembre 2005
    ...it is clear that prevailing defendants have a much harder row to hoe than do prevailing plaintiffs. See Gonzales v. Transfer Tech., Inc., 301 F.3d 608, 609 (7th Cir.2002). A prevailing defendant may be entitled to fees only in cases in which the plaintiff's action was frivolous, unreasonabl......
  • Assessment Technologies of Wi, LLC v. Wiredata
    • United States
    • U.S. Court of Appeals — Seventh Circuit
    • 17 Marzo 2004
    ...see also Aronson v. Quick Point Pencil Co., 440 U.S. 257, 262, 99 S.Ct. 1096, 59 L.Ed.2d 296 (1979); Gonzales v. Transfer Technologies, Inc., 301 F.3d 608, 609 (7th Cir.2002). The courts have not said, however, that the symmetry of plaintiff and defendant in copyright cases requires a presu......
  • Wilford v. County of Rush, Cause No. IP 02-985-C-T/K (S.D. Ind. 1/7/2003)
    • United States
    • U.S. District Court — Southern District of Indiana
    • 7 Enero 2003
    ...unreasonable, or (continued . . .) without foundation, even though not brought in subjective bad faith."); Gonzales v. Transfer Technologies, Inc., 301 F.3d 608, 609 (7th Cir. 2002), citing Khan v. Gallitano, 180 F.3d 829, 837 (7th Cir. 1999) (under 42 U.S.C. § 1988, a prevailing plaintiff ......
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    ...works and therefore there should be no thumb on the scales" in deciding whether to award attorneys' fees. Gonzales v. Transfer Technologies, Inc., 301 F.3d 608, 609 (7th Cir.2002); see also Assessment Technologies of WI, LLC v. WIREdata, Inc., supra, 361 F.3d at If there is an asymmetry in ......
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