Marks v. Leo Feist

• Decision Date: 01 June 1925
• Docket Number: No. 124.,124.
• Citation: 8 F.2d 460
• Parties: MARKS v. LEO FEIST, Inc.
• Court: U.S. Court of Appeals — Second Circuit

8 F.2d 460 (1925)

MARKS v. LEO FEIST, Inc.

No. 124.

Circuit Court of Appeals, Second Circuit.

June 1, 1925.

O. Ellery Edwards, of New York City (Julian J. Raphael, of New York City, of counsel), for appellant.

Gilbert & Gilbert, of New York City (A. S. Gilbert, Francis Gilbert, and Jerome E. Malino, all of New York City, of counsel), for appellee.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

ROGERS, Circuit Judge.

A suit was brought in the court below by Edward B. Marks, who sought to obtain a preliminary injunction to restrain an alleged infringement of a musical composition entitled "Wedding Dance Waltz" which Marks had copyrighted, and which it was alleged that Feist had infringed by a musical composition entitled "Swanee River Moon" which Feist had written and copyrighted. The court below denied Marks' application for the preliminary injunction, and on appeal to this court we affirmed the decree, 290 F. 959.

Thereafter a motion was made in the District Court to dismiss the action, and May 15, 1924, the motion was granted, and a decree was entered on June 2, 1924, in favor of defendant, and the complaint was dismissed with costs and the defendant was allowed a counsel fee of $1,500.

On the day that the decree was entered the solicitor for the plaintiff appealed from the decree. In the assignment of errors it is recited that counsel for plaintiff had never moved for a dismissal of the bill; that the court had also erred in denying the plaintiff's motion for a commission to take testimony; and that the court had also erred in allowing defendant an attorney's fee in the sum of $1,500.

We shall consider, in their inverse order, the errors assigned.

The general rule, which is subject to some exceptions of course, is that each party to a litigation must pay his own counsel fees, no matter how unjust the litigation may have been or how great may have been the expensa litis. In a case decided in the Supreme Court in 1796, Arcambel v. Wiseman, 3 Dall. 306, 1 L. Ed. 613, it appeared that a charge of $1,600 for counsel fees in the court below had been allowed. The nature of the case is not disclosed, but the Supreme Court disallowed it. The whole opinion is disposed of in seven lines. "We do not think," said the court, "that this charge ought to be allowed. The general practice of the United States is in opposition to it; and even if that practice were not strictly correct in principle, it is entitled to the respect of the Court, until it is changed, or modified, by statute."

In Oelrichs v. Spain, 15 Wall. 211, 21 L. Ed. 43 (1872), the general rule is commented upon more fully, and some of the reasons upon which it rests are stated; the court saying: "We think the principle of disallowance rests on a solid foundation, and that the opposite rule is forbidden by the analogies of the law and sound public policy." And in stating some of the disadvantages which would attend upon a contrary rule the court said: "There is no fixed standard by which the honorarium can be measured. Some counsel demand much more than others. Some clients are willing to pay more than others. More counsel may be employed than are necessary. When both client and counsel know that the fees are to be paid by the other party there is danger of abuse. A reference to a master, or an issue to a jury, might be necessary to ascertain the proper amount, and this grafted litigation might possibly be more animated and protracted than that in the original cause. It would be an office of some delicacy on the part of the court to scale down the charges, as might sometimes be necessary."

But, however all that may be, the question of the expediency of the rule seems now to be a matter for the Congress in so far as the question concerns the federal courts; and that body has seen fit to change the rule in so far as copyright cases are concerned.

The Copyright Act of March 4, 1909, § 40, 35 Stat. pt. 1, c. 320, p. 1084 (Comp. St. § 9561), provides that in actions brought under the act "full costs shall be allowed, and the court may award to the prevailing party a reasonable attorney's fee as part of the costs." The language of the act gives costs as a matter of right to the prevailing party, but leaves to the court's discretion the awarding of a reasonable attorney's fee. The court "shall" allow the costs but it "may" award an attorney's fee. Haas v. Leo Feist (D. C.) 234 F. 105, 109; Gross v. Van Dyk Gravure Co., 230 F. 412, 413, 144 C. C. A. 254; Mills, Inc., v. Standard Music Roll Co. (D. C.) 223 F. 849; Strauss v. Penn Printing, etc., Co. (D. C.) 220 F. 977, 980.

The amount of the attorney's fee which should be allowed, if any allowance is made, is a matter peculiarly within the discretion of the court which awards it. The trial judge in determining the matter should take into consideration the importance of the questions in litigation, the amount involved, and the value of the professional services rendered. He is to fix the amount at a reasonable sum, basing his conclusion upon his own knowledge of the facts and professional custom.

Decisions upon matters which are within the absolute discretion of a trial court are, of course, not reviewable in courts of appeal. Pittsburgh, C., C. & St. L. R. Co. v. Heck, 102 U. S. 120, 26 L. Ed. 58. But the discretion which a court exercises in fixing the allowance of fees is not an absolute one and may be reviewed in the appellate court when an abuse of discretion is shown. See Stallo v. Wagner, 245 F. 636, 639, 158 C. C. A. 64; S. E. Hendricks Co. v. Thomas Publishing Co., 242 F. 37, 42, 154 C. C. A. 629; Universal Film Mfg. Co. v. Copperman, 218 F. 577, 582, 134 C. C. A. 305.

It seems to us, taking all the circumstances in this case into consideration, that the learned District Judge, in fixing the attorney's fee herein at $1,500, inadvertently committed an error of judgment. We think a fee in that amount was excessive, and feel constrained to reduce it to the amount of $500, which seems to us, all things considered, to be a generous allowance. And in this connection we call attention to the fact that the solicitor for the defendant, in an affidavit which is in the record, states that in a conversation he had with the solicitor for the plaintiff on March 12, 1924, the defendant's solicitor himself declared that he "thought that a counsel fee of $1,000 would be amply justified by the circumstances of this case." We are satisfied that a fee of $500 was ample compensation not only for services rendered prior to March 12, 1924, but also for the relatively unimportant services rendered after that date.

This brings us to the consideration of the action of the court in denying the motion of the plaintiff's solicitor that a commission issue to the United States Consul in Berlin, Germany, to take the deposition of Paul Lincke to prove certain matters alleged in his bill of complaint. The plaintiff commenced this suit in March, 1922, and this application to take testimony in Germany was not made until the case had been pending for two years and until one year after this court had passed on the refusal of the...