Erickson Productions Inc v. Kraig R Kast

Background

Erickson Productions, Inc. and Jim Erickson sued Kraig Rudinger Kast over alleged infringement of copyrights in three photographs. After a jury found contributory and vicarious infringement and awarded $450,000 in statutory damages, the court previously awarded Erickson $182,961 in attorneys’ fees and $3,225.58 in costs. The judgment was later amended to add additional judgment debtors.

The Ninth Circuit affirmed the infringement judgment in part, reversed it in part, and sent the willfulness issue back to the district court. On remand, the district court again found willful infringement and awarded $450,000 in statutory damages. Erickson then sought supplemental fees and costs for three categories of work: the first appeal, the remand proceedings concerning willfulness, and post-judgment collection efforts.

Kast represented himself in opposing the motion. He did not challenge the hours billed, the hourly rates, or the requested costs. Instead, he argued that the Ninth Circuit’s direction that each party bear its own costs prevented any additional fee award.

Rulings on the Requested Fees

The court rejected Kast’s argument that the Ninth Circuit’s costs order barred the fees previously awarded by the district court. The Ninth Circuit had not addressed those fees, and Kast had not appealed the earlier district-court orders awarding them. The court also concluded that the appellate costs order did not prevent a later request for attorneys’ fees under Copyright Act section 505.

The court denied Erickson’s request for fees incurred in the first appeal. Under Ninth Circuit rules, a request for appellate fees had to be made to the Ninth Circuit, or transferred by that court to the district court. Erickson did not first seek those fees from the Ninth Circuit, so the district court was not authorized to award them.

The court then considered whether fees and costs for the willfulness proceedings on remand and the collection efforts were appropriate. It found that Erickson achieved substantial success, including the reinstated finding of willful infringement and the maximum statutory damages. The court found that compensation supported an additional award to some extent, although Erickson had already received a substantial fee award. It found that deterrence did not strongly support more fees because the $450,000 damages award was already substantial.

The court did not find Kast’s trial positions objectively unreasonable based on the trial evidence, noting that the Ninth Circuit had said a properly instructed jury might not have found willfulness. But the court found that the record showed unreasonable and uncooperative positions concerning collection of the judgment. It concluded, after considering the circumstances as a whole, that a supplemental fee and cost award for the remand and collection work was appropriate.

Amount and Required Supplemental Submission

The court did not set the amount of the supplemental award. Erickson’s time records did not distinguish work on the noncompensable first appeal from work on the remand and collection efforts. Erickson also had not provided an hourly rate or supporting evidence for attorney Lynda Chung’s work, and had not adequately categorized certain costs or identified authority showing that each category was compensable.

The court ordered Erickson to resubmit supporting evidence within 14 days. Erickson had to remove all fees for the first appeal, separate the records for remand work from those for collection work, and provide a sworn declaration stating the total fees requested in each category. Any requested costs also had to be categorized, totaled, and supported by authority. Erickson was required to submit a proposed amended judgment. Kast could respond to challenges about the categorization of the records, but the court stated that he had waived challenges to the reasonableness of the hours and rates.

Disposition

The court granted in part and denied in part Erickson’s motion for a supplemental award of attorneys’ fees and costs. It denied fees for the first appeal, found that Erickson could seek additional fees and costs for the remand and collection efforts, and deferred determining the amount until after supplemental briefing.