Paulo v. Agence France Presse

Background

Leong Francisco Paulo, described in the opinion as a Portuguese photojournalist, sued Agence France-Presse (AFP), Getty Images (US), Inc., and Getty Images, Inc. He alleged that the defendants used thousands of his photographs in ways that infringed his copyrights and violated copyright-management-information provisions of the Copyright Act.

In an earlier ruling, the court conditionally dismissed the action under the doctrine of forum non conveniens, which allows a court to decline to hear a case when another forum is more appropriate. The court also dismissed the action as to AFP for lack of personal jurisdiction. The conditional dismissal allowed Paulo to pursue his claims in Portugal and to return to this forum if the Portuguese court declined to hear his Copyright Act claims.

The defendants then moved for attorney’s fees and costs. Magistrate Judge Sarah L. Cave recommended denying the motion. The defendants objected, and Paulo responded. Judge Rochon reviewed the objections and adopted the recommendation.

Attorney’s Fees Under 17 U.S.C. § 505

Section 505 of the Copyright Act permits a district court, in its discretion, to award a reasonable attorney’s fee to a prevailing party. The court first considered whether the defendants were prevailing parties. It applied the rule that a prevailing party must obtain a court-sanctioned change in the parties’ legal relationship.

The defendants argued that a non-merits dismissal was enough to make them prevailing parties. The court acknowledged that a defendant can sometimes qualify as a prevailing party after obtaining a non-merits judgment. But it ruled that the defendants did not qualify here because the dismissal was conditional: Paulo remained free to pursue the claims in Portugal and potentially return to this court. The court therefore concluded that the dismissal had not conclusively changed the parties’ legal relationship and that it remained unresolved which party would ultimately prevail.

The court separately ruled that AFP’s dismissal for lack of personal jurisdiction did not make AFP a prevailing party. Paulo remained free to assert his claims against AFP in a court with personal jurisdiction over AFP.

The court also held that, even if the defendants were treated as prevailing parties, discretionary factors did not support awarding fees. The court found no basis to conclude that Paulo’s claims were frivolous, unreasonable, or brought with an improper motive. It also found that choosing this forum did not make Paulo’s litigation vexatious or unreasonable and that awarding fees would have, at most, a minimal deterrent effect on photographers bringing similar copyright claims.

Costs Under 28 U.S.C. § 1919

Section 1919 allows a court to award just costs when an action is dismissed for lack of jurisdiction. The court ruled that the conditional dismissal based on forum non conveniens did not qualify because forum non conveniens is not a jurisdictional bar; it is a decision to refrain from exercising jurisdiction.

As to AFP’s dismissal for lack of personal jurisdiction, the court determined that the relevant discretionary factors still weighed against awarding costs. The court therefore declined to award costs under Section 1919.

Costs Under Federal Rule of Civil Procedure 41(d)

Rule 41(d) permits a court to award costs when a plaintiff previously dismissed an action in any court and then files an action based on the same claim against the same defendant. AFP sought costs incurred in a Portuguese proceeding that Paulo had voluntarily dismissed before filing this case.

The court agreed with the magistrate judge that “any court” in Rule 41(d) refers to domestic courts, not foreign courts. Because applying the rule to the Portuguese proceeding would require applying it to a foreign action, the court ruled that Rule 41(d) did not authorize the requested costs here. The court added that, even if Rule 41(d) could apply, it would decline to exercise its discretion to award costs.

The defendants also argued that they should be allowed to supplement the record with additional documentation. The court rejected that request because the absence of a complete cost breakdown was not the reason for denying the motion; even with additional documentation, the court would not have awarded fees or costs under Rule 41(d).

Disposition

The court adopted the Report and Recommendation in full, denied the defendants’ objections, and denied the defendants’ motion for fees. The opinion did not decide the ultimate merits of Paulo’s copyright claims.