IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 14-20371

Summary Calendar

MACRO NICHE SOFTWARE, INCORPORATED; MICHAEL J. 

RUTHEMEYER; R/MED, INCORPORATED, 

 Plaintiffs - Appellees

v.

IMAGING SOLUTIONS OF AUSTRALIA, 

 Defendant - Appellant

Appeal from the United States District Court

for the Southern District of Texas

USDC No. 4:12-CV-2293

Before PRADO, OWEN and GRAVES, Circuit Judges.

PER CURIAM:*

Imaging Solutions of Australia (“ISA”) prevailed in a copyright 

infringement suit brought against it by Plaintiffs Macro Niche Software, Inc., 

R/MED, Inc., and Michael J. Ruthemeyer (collectively “Plaintiffs”). ISA

appeals the district court’s denial of its motion for attorney’s fees. We affirm. 

* Pursuant to 5TH CIR. R. 47.5, the court has determined that this opinion should not 

be published and is not precedent except under the limited circumstances set forth in 5TH 

CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

May 20, 2015

Lyle W. Cayce

Clerk

 

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I. Factual and Procedural Background

On August 1, 2012, Plaintiffs filed suit against, inter alia, ISA for

copyright infringement and civil conspiracy. Plaintiffs sell computer software 

known as ApronCheck, which tracks the maintenance of lead aprons used by 

x-ray technicians to facilitate the protection of the apron users from radiation. 

ISA is a supplier of radiographic products, including lead aprons, to 

Australian, New Zealand, and Southeast Asian markets. Plaintiffs’ suit 

claimed that they and ISA discussed marketing the ApronCheck software in 

Australia and that the parties began to work on joint marketing materials but 

never reached a definitive agreement. ISA subsequently was involved in the 

release of competing apron-tracking software named RadTrack. Plaintiffs’

infringement suit claimed that RadTrack is substantially similar to 

ApronCheck and was developed using the Plaintiffs’ protected intellectual 

property. ISA filed counterclaims against the Plaintiffs for negligent 

misrepresentation and fraudulent misrepresentation.

On December 27, 2013, the district court granted ISA’s motion for 

summary judgment on the Plaintiffs’ copyright and civil conspiracy claims. 

The district court found that while Plaintiffs claimed RadTrack in its entirety 

was substantially similar to ApronCheck, Plaintiffs failed to produce evidence 

that would allow it to perform the necessary abstraction and filtration steps of 

this circuit’s test for software copyright infringement. See., e.g., Computer 

Mgmt. Assistance Co. v. Robert F. DeCastro, Inc., 220 F.3d 396, 400-01 (5th Cir. 

2000) (describing the “abstraction-filtration” method). After summary 

judgment, the only remaining issues between Plaintiffs and ISA were ISA’s 

counterclaims. Due to Plaintiffs’ failure to adequately answer the 

counterclaim allegations, the district court deemed them admitted. After a 

trial on the issue of damages, a jury awarded ISA $129,607.00. 

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ISA then filed a motion seeking $239,723.30 in attorney’s fees, 

$35,265.57 in costs, and pre-judgment and post-judgment interest on the

damages award. The district court denied attorney’s fees, but awarded ISA 

costs and interest. ISA appeals the denial of attorney’s fees. 

II. Discussion

We review the district court’s refusal to award attorney’s fees in a 

copyright infringement case for abuse of discretion. Virgin Records Am., Inc. 

v. Thompson, 512 F.3d 724, 725 (5th Cir. 2008) (citing Positive Black Talk Inc. 

v. Cash Money Records, Inc., 394 F.3d 357, 380 (5th Cir. 2004)). “A trial court 

abuses its discretion in awarding or refusing to award attorney’s fees when its 

ruling is based on an erroneous view of the law or a clearly erroneous 

assessment of the evidence.” Id. (quoting Positive Black Talk, 394 F.3d at 380).

“The Copyright Act of 1976, 17 U.S.C. § 505, provides in relevant part 

that in any copyright infringement action ‘the court may . . . award a 

reasonable attorney’s fee to the prevailing party as part of the costs.’” Fogerty 

v. Fantasy, Inc., 510 U.S. 517, 519 (1994) (quoting 17 U.S.C. § 505). “Prevailing 

plaintiffs and prevailing defendants are to be treated alike, but attorney’s fees 

are to be awarded to prevailing parties only as a matter of the court’s 

discretion.” Id. at 534. An award of attorney's fees to the prevailing party in 

a copyright action is “the rule rather than the exception and should be awarded 

routinely.” Virgin Records, 512 F.3d at 726 (quoting Positive Black Talk, 394 

F.3d at 380). However, “recovery of attorney’s fees is not automatic.” Id.; see 

Fogerty, 510 U.S. at 533-34 (rejecting a proposed automatic-recovery rule). In 

Fogerty, the Supreme Court listed several non-exclusive factors that a court 

may consider in exercising its discretion: “frivolousness, motivation, objective 

unreasonableness (both in the factual and in the legal components of the case) 

and the need in particular circumstances to advance considerations of 

compensation and deterrence.” Fogerty, 510 U.S. at 534 n.19 (quoting Lieb v. 

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Topstone Industries, Inc., 788 F.2d 151, 156 (3rd Cir. 1986)); see Virgin Records, 

512 F.3d at 726. “There is no precise rule or formula for making these 

determinations,” but instead the district court must exercise equitable 

discretion in light of the considerations identified by the Supreme Court. 

Fogerty, 510 U.S. at 519 (quoting Hensley v. Eckerhart, 461 U.S. 424, 436-37

(1983)); see Virgin Records, 512 F.3d at 726-27. We have previously affirmed 

the denial of attorney’s fees in copyright infringement cases where the district 

court fully considered and applied the relevant factors when denying fees. See 

Virgin Records, 512 F.3d at 726-27; Positive Black Talk, 394 F.3d at 381-83;

Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 817 (5th Cir. 1997).

In this case, the district court correctly set forth the standards, including

the text of 17 U.S.C. § 505, the principle that fee awards for prevailing parties 

are the rule rather than the exception, its own discretion, and the nonexclusive list of Fogerty factors. The district court then applied each of the 

factors to the facts of this case, concluded that all of the factors weighed against 

awarding attorney’s fees to ISA, and gave a reasonable explanation for its 

analysis of each factor. Specifically, the court found that although Plaintiffs 

lost at summary judgment, their claims were neither frivolous nor objectively 

unreasonable. The court pointed out that Plaintiffs provided two experts who 

stated that the two software programs were substantially similar, that ISA 

had access to Plaintiffs’ intellectual property due to a prior relationship, and 

that software copyright infringement is complex and often requires experts to 

differentiate protectable elements from non-protectable elements. The court

also found that there was no evidence of bad faith motivation on the Plaintiffs’ 

part, and because the claims were not unreasonable and there was no bad 

faith, the need for compensation and the deterrence of future unmeritorious

suits would not be served by an award of attorney’s fees in this case. The 

district court stated that it considered the entire record and found no reason to 

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depart from the outcome dictated by application of these factors, and thus

denied ISA’s motion for attorney’s fees. 

Although Plaintiffs were unsuccessful at adequately differentiating 

protectable and non-protectable elements of the software program on summary 

judgment, there is no basis to overturn the district court’s assessment of 

Plaintiffs’ claims or its conclusion that attorney’s fees are not appropriate in 

this case. We find no abuse of discretion in the district court’s denial of 

attorney’s fees. 

III. Conclusion

For the foregoing reasons, the district court’s denial of attorney’s fees is 

AFFIRMED. 

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