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WO

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA 

SellPoolSuppliesOnline.com LLC, 

Plaintiff, 

v. 

Ugly Pools Arizona Incorporated, et al., 

Defendants. 

No. CV-15-01856-PHX-BSB 

ORDER 

 Defendants, Ugly Pools Arizona, Inc., and Brian Morris (“Defendants”), have filed 

a motion for attorney’s fees and costs (Doc. 102) and a motion for sanctions. (Doc. 103.) 

Plaintiff opposes both motions, which are fully briefed. (Docs. 105, 106, 107, 109.) For 

the reasons below, the Court denies the motion for attorney’s fees and costs. The Court 

considers the motion for sanctions in a separate order. 

I. Background 

 On September 17, 2015, Plaintiff filed a complaint asserting copyright infringement 

under the Copyright Act, 17 U.S.C. § 501, and unfair competition under Arizona law. 

(Doc. 1.) The Court granted Plaintiff leave to file an amended complaint, and Plaintiff 

filed its First Amended Complaint (“FAC”). (Docs. 38, 30.) Plaintiff asserted the 

following three counts: (1) copyright infringement under the Copyright Act, 17 U.S.C. 

§ 501(a) (Count One); (2) unfair competition under Arizona law (Count Two); and (3) 

violation of the Digital Millennium Copyright Act (“DMCA”), integrity of copyright 

management information under 17 U.S.C. § 1202 (Count Three). (Doc. 39.) 
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 The parties filed cross-motions for summary judgment on all three counts of the 

FAC. (Docs. 43, 45.) On June 9, 2017, the Court granted summary judgment in favor of 

Defendants on Count Two. (Doc. 64.) The Court granted summary judgment in favor of 

Defendants on Plaintiff’s removal of copyright management information claim under 

17 U.S.C. § 1202(b), asserted in Count Three. (Id. at 42.) The Court denied both motions 

for summary judgment on Plaintiff’s falsification of copyright management information 

claim under 17 U.S.C. § 1202(a), asserted in Count Three. (Id.) The Court denied without 

prejudice both motions for summary judgment on Count One, copyright infringement. 

 

(Id.) 

 In the June 2017 order, the Court considered whether Plaintiff had properly 

registered its copyright and met the registration precondition for bringing a copyright 

infringement suit. (Id. at 12-13); see 17 U.S.C. § 411(a) (“no action for infringement of 

the copyright in any United States work may be instituted until registration of the copyright 

has been made in accordance with this title.”).1

 Based on evidence that Plaintiff had 

knowingly provided inaccurate information to the copyright office during the copyright 

registration process, the Court concluded that the statutory criteria for mandatory referral 

to the copyright office under 17 U.S.C. § 411(b)(2) had been satisfied. (Doc. 64 at 24.) 

Therefore, on June 27, 2017, the Court sent a request for advice to the Register of 

Copyrights. (Doc. 67.) 

On September 5, 2017, the Register of Copyrights responded to the Court’s inquiry 

and stated that: (1) it would have refused registration of Plaintiff’s copyright with a July 3, 

2014 publication date had it known that the submitted website included copyrightable 

content that was added after July 3, 2014; and (2) it “would have demanded a copy of the 

deposit as published on July 3, 2014”; or (3) it would have “asked Plaintiff to limit its claim 

to material published on August 26, 2015, and to revert back to the 2015 year of 

completion, and the August 26, 2015 date of publication, for the original application.” 

(Doc. 72-1 at 8.) If Plaintiff had “refused to limit the claim and revert back to the August 

 

1

 The Court’s June 9, 2017 Order includes a detailed discussion of this issue and of the 

copyright registration process. (Doc. 64 at 10-20.) 
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26, 2015 date of first publication and 2015 year of completion, the Acting Register would 

have refused registration.” (Id.) 

 After receiving the Register of Copyrights’ response, the Court permitted the parties 

to file second motions for summary judgment on Plaintiff’s copyright infringement claim 

asserted in Count One of the FAC. (Docs. 73, 78, 79.) On September 24, 2018, the Court 

granted Defendants’ second motion for summary judgment on Plaintiff’s copyright 

infringement claim and denied Plaintiff’s second motion for summary judgment on that 

claim. (Doc. 95.) The Court explained that Plaintiff had “not properly registered the work 

at issue in this case” and, therefore, “the copyright registration [was] insufficient to support 

a copyright infringement claim . . . .” (Id. at 26.) The Court also allowed Defendants to 

file a third motion for summary judgment on Plaintiff’s claim for false copyright marking 

under 17 U.S.C. § 1202(a). (Docs. 83, 94.) On September 24, 2018, the Court granted 

summary judgment in favor of Defendants on that claim. (Doc. 96.) The Court entered 

judgment in Defendants’ favor and dismissed Plaintiff’s cause of action. (Doc. 97.) 

Defendants have now filed a motion for attorney’s fees and costs.2

 (Doc. 102.) A 

party requesting an award of attorneys’ fees must show that it is (a) eligible for an award, 

(b) entitled to an award, and (c) requesting a reasonable amount. See LRCiv 54.2(c). 

Defendants seek attorney’s fees and costs pursuant to 17 U.S.C. § 505 on Plaintiff’s 

copyright infringement claim (Count One), unfair competition claim (Count Two), and 

DMCA claims (Count Three). (Id. at 3-8.) Defendants alternatively seek attorney’s fees 

pursuant to 17 U.S.C. § 1203(b)(5) on Plaintiff’s DMCA claims. (Id. at 8-11.) As set forth 

below, the Court denies Defendants’ motion for attorney’s fees and costs. 

II. Attorney’s Fees under § 505 of the Copyright Act 

 Section 505 of the Copyright Act provides that the court “may . . . award reasonable 

attorney’s fees to the prevailing party as part of the costs.” 17 U.S.C. § 505. The same 

standard applies to both prevailing defendants and plaintiffs. Fogerty v. Fantasy, Inc., 510 

U.S. 517, 523 (1994). The determination of attorney’s fees under § 505 is left to the court’s 

 

2

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discretion. Id. However, “[t]he automatic awarding of attorney’s fees to the prevailing 

party would pretermit the exercise of that discretion.” Id. at 533; see also Kirtsaeng v. 

John Wiley & Sons, Inc., ___ U.S. ___, 136 S. Ct. 1979, 1985 (2016) (“[A] district court 

may not ‘award [ ] attorney’s fees as a matter of course’ . . . .”) (quoting Fogerty, 510 U.S. 

at 533). 

 When determining whether to award attorney’s fees in a copyright case, the court 

may consider “several non-exclusive factors” including: “[the degree of success obtained], 

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.” Kirtsaeng, 136 S. Ct. at 1985 (citing 

Fogerty, 510 U.S. at 534 n.19); Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657, 675 (9th 

Cir. 2017) (stating that the court may consider “the degree of success obtained in the 

litigation” and “whether the chilling effect of attorney’s fees may be too great”). District 

courts should “accord substantial weight to” the “reasonableness of [the] losing party’s 

legal and factual arguments.” Shame on You Prods., Inc. v. Banks, 893 F.3d 661, 666 (9th 

Cir. 2018); see also Kirtsaeng, 136 S. Ct. at 1989 (giving the reasonableness factor 

“significant weight”). “But the court must also give due consideration to all other 

circumstances relevant to granting fees; and it retains discretion, in light of those factors, 

to make an award even when the losing party advanced a reasonable claim or defense.” 

Kirtsaeng, 136 S. Ct. at 1983. 

A. Attorney’s Fees for the Copyright Infringement Claim 

In their motion, Defendants seek an award attorney’s fees incurred in defending 

against Plaintiff’s copyright infringement claim. Plaintiff opposes the motion.3

 

 

3

 Plaintiff asserts that the Court should not award attorney’s fees under § 505 because the 

“action here is more akin to Defendants asking for declaratory relief.” (Doc. 106 at 9.) 

Plaintiff further argues that the Ninth Circuit has not held whether attorney’s fees are available under the Copyright Act for declaratory relief actions. (Id.) The Court finds this 

argument unpersuasive. Defendants did not file a counterclaim for declaratory relief. Additionally, Plaintiff does not cite any legal authority to support its position that the Court should treat Defendants’ successful assertion of a defense based on Plaintiff’s failure to 

satisfy the registration precondition of § 411 as an action for declaratory relief. (Id. at 9-

11.) The Court, therefore, does not further consider this argument. 
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(Doc. 106.) Upon consideration of the relevant factors, discussed below, the Court 

concludes that Defendants are not entitled to an award of attorney’s fees on the copyright 

infringement claim. 

 1. Prevailing Party

 “[A] ‘prevailing party’ is one who has been awarded some relief by the court. The 

key inquiry is whether some court action has created a material alteration of the legal 

relationship of the parties.” Cadkin v. Loose, 569 F.3d 1142, 1148-49 (9th Cir. 2009) 

(internal citation and quotation marks omitted). A court action materially alters “the legal 

relationship of the parties” when it “deprive[s the losing party] of the ability to seek relief 

in federal court” under the Copyright Act against the party that is seeking a fee award. Id. 

at 1150 (defendants were not “prevailing parties” under § 505 because the claims against 

them were dismissed voluntarily and without prejudice and defendants “remain[ed] subject 

to the risk” that the plaintiffs could refile the copyright claims). Thus, a “defendant is a 

prevailing party following dismissal of a claim if the plaintiff is judicially precluded from 

refiling the claim against the defendant in federal court.” Id.; see Tavory v. NTP, Inc., 297 

F. App’x 986, 989-90 (Fed. Cir. 2008) (dismissal of copyright infringement claim based 

on invalid registration materially altered the legal relationship between the parties because 

“[b]y finding the deposit copy of that work to be an invalid reconstruction, the court 

essentially decided that [plaintiff] cannot ever succeed in a copyright infringement claim 

against [defendant] based on the work represented in that invalid copy”). 

Defendants assert that they are the prevailing party in this matter. (Doc. 102 at 1.) 

Plaintiff does not oppose that assertion. (Doc. 106.) The Court concludes that Defendants 

are the prevailing party because the Court dismissed the claims against them with 

prejudice, which materially altered the relationship between Plaintiff and Defendants. See 

Cadkin, 569 F.3d at 1148-49. Therefore, this factor favors an award of attorney’s fees. 

2. The Degree of Success Obtained 

 The Ninth Circuit has noted that successful defenses “do not always implicate the 

ultimate interests of copyright” because “copyright defendants do not always reach the 
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merits, prevailing instead on technical defenses,” such as “statute of limitations, laches, or 

the copyright registration requirements.” Fantasy, Inc. v. Fogerty, 94 F.3d 553, 560 (9th 

Cir. 1996) (Fogerty II); see also VMG Salsoul, LLC v. Ciccone, 2014 WL 12585798, at *2 

(C.D. Cal. Aug. 28, 2014). Thus, the degree of success factor “weighs more in favor of a 

party who prevailed on the merits, rather than on a technical defense.” DuckHole Inc. v. 

NBCUniversal Media LLC, 2013 WL 5797204, at *2 (C.D. Cal. Oct. 25, 2013). When a 

defendant has prevailed on a technical defense, courts consider whether the defendant 

remains subject to future claims by the plaintiff or whether the plaintiff’s claims were 

dismissed with prejudice. See Epikhin v. Game Insight N.A., 2016 WL 1258690, at *4-5 

(N.D. Cal. Mar. 31, 2016) (finding the degree of success factor neutral when the defendants 

prevailed on a technical defense rather than on the merits and the plaintiff’s claims were 

dismissed without prejudice). 

Defendants argue that their success in this matter was “complete.” (Doc. 102 at 3.) 

In support of this position they rely on the final judgment in their favor on Plaintiff’s 

copyright claim. (Id.; see also Docs. 64, 95, 97.) Plaintiff responds that Defendants 

prevailed on a technical defense—Plaintiff’s failure to satisfy the registration 

precondition—that does not support an award of attorney’s fees. (Doc. 106 at 7-8.) 

Defendants prevailed on the issue of the invalidity of the copyright registration. (Doc. 95.) 

As Plaintiff argues, this was a technical defense. See Fogerty II, 94 F.3d at 560; Epikhin, 

2016 WL 1258690, at *4. 

However, “it is important that parties who seek the benefits of copyright registration 

have proceeded in accordance with those rules to ensure that the process is fair and 

effective.” Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, 2017 WL 8236267, at *5 

(C.D. Cal., Dec. 5, 2017). The importance of complying with the rules governing copyright 

registration is illustrated by the Register of Copyright’s response to the Court’s inquiry—

it would have refused the registration of Plaintiff’s copyright with a July 3, 2014 

publication date had it known that the submitted website included copyrightable content 

that was added after July 3, 2014. (See Doc. 72-1 at 8; Docs. 95 at 8-9.) 
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Additionally, the Court dismissed Plaintiff’s claims with prejudice. (Doc. 95, 96, 

97); see Minden Pictures, Inc. v. John Wiley & Sons, Inc., 2014 WL 1724478, at *6 (N.D. 

Cal. Apr. 29, 2014) (stating that defendant’s degree of success was “not insubstantial” 

when summary judgment precluded plaintiff from “assert[ing] similar claims against [the 

defendant] in any federal court based on the underlying assignment or agency agreements 

at issue”). The Court concludes that the degree of success factor provides “modest weight 

in support an award of fees and costs” because of the preclusive effect of the judgment. 

See Gold Value, 2017 WL 8236267, at *5. 

 3. The Frivolousness of Plaintiff’s Position 

 A claim is frivolous when it is “clearly baseless,” involving “fantastic or delusional 

scenarios.” Perfect 10, Inc. v. Visa Int’l Serv. Ass’n, 2005 WL 2007932, at *4 (N.D. Cal. 

Aug. 12, 2005) (quoting Neitzke v. Williams, 490 U.S. 324, 327-28 (1989)). An 

unsuccessful claim is not necessarily frivolous. Neitzke, 490 U.S. at 329. “The standard 

for frivolousness appears to be ‘somewhat’ higher than the standard for objective 

reasonableness.” Epikhin, 2016 WL 1258690, at *6 (citation omitted). 

 Defendants assert that Plaintiff’s claim for copyright infringement was frivolous. 

(Doc. 102 at 4.) Defendants’ assertion is based on Plaintiff’s evolving description of the 

allegedly infringed copyrighted material as the “Platform,” “photographs and the software 

required to show them in a 360-degree view,” and later as a “collection of photos.” (Id.; 

see also Doc. 64 at 11-12 (discussing the changing description of the allegedly infringed 

work).) In response to Defendants’ motion, Plaintiff does not directly address its changing 

description of the allegedly infringed work. (Doc. 106 at 5.) Rather, Plaintiff states that 

the FAC cannot be construed as frivolous because it asserted a copyright infringement 

claim against Defendants who admitted that they made a copy of Plaintiff’s “copyrighted 

work (‘Works’ or ‘Registered Photos’ or U.S. Copyright Office (‘USCO’) Registration TX 

8-268-803).” (Doc. 106 at 5.) 

 Although Plaintiff’s continued narrowing of the description of the work that formed 

the basis of its copyright infringement claim complicated the resolution of the copyright 
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infringement claim, the Court finds that it does not render Plaintiff’s copyright 

infringement claim frivolous. See Karam v. City of Burbank, 352 F.3d 1188, 1195 (9th 

Cir. 2003) (stating that a case is considered frivolous only when the result is obvious or the 

arguments are wholly lack merit); Goldberg v. Cameron, 2011 WL 3515899, at *3 (N.D. 

Cal. Aug. 11, 2011) (finding copyright infringement claim frivolous when it was initiated 

more than ten years after the statute of limitations had run). Therefore, this factor does not 

weigh in favor of awarding attorney’s fees. 

 4. Plaintiff’s Motive in Bringing the Copyright Infringement Claim 

 “[T]he existence of bad faith or an improper motive in bringing or pursuing an action 

weighs in favor of an award of fees to a prevailing party.” Frost–Tsuji Architects v. 

Highway Inn, Inc., 2015 WL 5601853, at *7 (D. Haw. Sept. 23, 2015). “A finding of bad 

faith can be based on actions that led to the lawsuit, as well as on the conduct of the 

litigation.” Id. The motivation factor weighs in favor of awarding attorney’s fees when it 

is shown that a plaintiff’s “motivation in alleging copyright claims is to secure benefits 

other than merely redressing grievances.” Identity Arts v. Best Buy Enter. Servs., 2008 WL 

820674, at *5 (N.D. Cal. Mar. 26, 2008) (citing Maljack Prods, Inc. v. Goodtime Home 

Video Corp., 81 F.3d 881 (9th Cir. 1996) (finding that the motive factor supported an award 

of attorney’s fees to the defendant when plaintiff brought the lawsuit to expose defendant 

to risk and to “secure a competitive advantage in the market.”). 

 Defendants argue that Plaintiff’s motive in bringing this suit was to “extort an 

excessive settlement sum based upon the threat of attorneys’ fees not yet accrued.” 

(Doc. 109 at 2-3, Doc. 102 at 4-5.) Defendants assert that they took down the allegedly 

infringing website “by the time this suit was filed.” (Doc. 102 at 4.) Defendants also assert 

that the value of a license for Plaintiff’s website was about $15,000, and Defendants 

grossed about $3,000 from the allegedly infringing website. (Id. at 5.) However, when 

this case was filed in September 2015, Plaintiff demanded $90,000 to settle this case and 

later reduced that demand to $65,000.4

 (Doc. 102, Ex. F at 7.) Defendants assert that 

 

4

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Plaintiff’s settlement demands exceeded the $32,000 in damages that Plaintiff claimed in 

its January 18, 2016 response to Defendants’ interrogatories. (Doc. 102 at 4 (citing 

Doc. 46-7 at 2 (stating that Plaintiff’s “damages to date” were “$32,000 including the cost 

of the platform, lost revenue from monthly rental of the platform, and legal fees.”)).) 

Defendants assert that Plaintiff’s rationale for its excessive settlement demands was that it 

would be entitled to recover all of its attorneys’ fees at the conclusion of litigation.5

 

(Doc. 102 at 5; Doc. 102, Ex. G (stating that Plaintiff believed it would prevail and could 

satisfy all five factors for awarding attorney’s fees).) 

In its response to the motion for attorney’s fees, Plaintiff states that because it is 

“undisputed that [Plaintiff] discovered that Defendants had made a copy of its Works,” it 

was not motivated by “bad faith” in bringing this action. (Doc. 106 at 5 (citing Folkens v. 

Wyland Worldwide, LLC, 882 F.3d 768 (9th Cir. 2018).)6

 Plaintiff does not dispute 

Defendants’ assertion that its settlement demands exceeded the amount of damages, 

including attorney’s fees, it claimed in January 2016. (Doc. 106 at 5.) However, there is 

no direct evidence that Plaintiff had an improper motive in filing this suit. See Gold Value, 

2017 WL 8236267, at *7 (finding no improper motive when, although plaintiff was aware 

of the validity issue early in the litigation, the “ultimate disposition of the validity of the 

[copyright registration] was not certain when the action was commenced and pursued.”). 

Although Plaintiff does not dispute that its settlement demands exceeded the amount 

of damages it claimed in January 2016, the Court finds that this conduct—upon which 

Defendants base their assertion of improper motive—does not establish that Plaintiff had 

an improper motive in bringing the copyright infringement claim. But see Lewis v. 

 

that the district did not err in considering settlement negotiatons for purposes of deciding a reasonable attorney’s fee award); cf. Fed. R. Evid. 408 (providing that settlement communications are not admissible “either to prove or disprove the validity or amount of a disputed claim or to impeach by a prior inconsistent statement or a contradiction.”). 

5

 The significance of the parties’ conduct during settlement negotiations is also addressed in the Court’s order on Defendants’ Motion for Sanctions. (Docs. 103, 111.) 

6

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misplaced. Although the court in Folkens addressed a copyright infringement claim, it did not address the factors for awarding attorney’s fees. Folkens, 882 F.3d 768. 
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Activision Blizzard, Inc., 2014 WL 4953770, at *3 (N.D. Cal., Sept. 25, 2014) (finding 

improper motive when plaintiff pursued an unreasonable, almost frivolous, copyright claim 

and made an unreasonable demand of $1.2 million to settle the claim). Therefore, this 

factor does not weigh in favor of awarding attorney’s fees. 

 5. Objective Reasonableness of Plaintiff’s Position 

When determining whether to award fees under the Copyright Act, the court also 

considers the objective reasonableness of the losing party’s position “both in the factual 

and in the legal components of the case.” Kirtsaeng, 136 S. Ct. at 1983, 1985. The court 

gives substantial weight to this factor. Id. at 1984; see Glacier Films v. Turchin, 896 F.3d 

1033, 1037 (9th Cir. 2018) (citing Shame On You Prods., Inc., 893 F.3d at 666). However, 

it is not dispositive. See Kirtsaeng, 136 S. Ct at 1988 (stating that reasonableness is “only 

an important factor in assessing fee applications—not the controlling one.”). 

 Defendants assert that Plaintiff’s copyright infringement claim was unreasonable 

because it was based on a copyright registration that it obtained by giving false information 

to the copyright office. (Doc. 102 at 6.) In its response, Plaintiff argues that the case was 

“nuanced and hard fought” and, therefore, attorney’s fees are not warranted. (Doc. 106 

at 6.) Plaintiff further argues that the case was not decided on the merits of the Copyright 

Act, but on the “procedural process with a third-party Agency.” (Id. at 7.) Thus, Plaintiff 

attempts to minimize the role of the copyright office by describing it as a “third-party 

Agency,” without recognizing its statutory authority in the registration of copyrights. 

 Plaintiff’s copyright infringement claim was initially based on the copyright 

application that it submitted to the copyright office on September 15, 2015, several days 

before Plaintiff filed this action. (See Doc. 64 at 12 (discussing the copyright application)); 

Cosmetic Ideas, Inc., v. IAC/Interactivecorp, 606 F.3d 612, 619-21 (9th Cir. 2010) (holding 

that the copyright office’s receipt of a completed application is sufficient for purposes of 

initiating copyright infringement litigation). However, that application did not support 

Plaintiff’s copyright infringement claim because the date of publication contained in the 
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application, August 26, 2015, was after the date of the alleged infringement, September 

16, 2014. (See Doc. 64 at 5, 8, 18.) 

After Defendants raised this issue in their motion for summary judgment (Doc. 45 

at 8; Doc. 64 at 18), Plaintiff submitted an affidavit to the copyright office stating that 

“‘SPSO first published the Platform on or about July 3, 2014. It was completed on or about 

June 25, 2014.’” (Doc. 64 at 18 (citing Doc. 51, Ex. K at ¶ 4).) The affidavit further stated 

that “‘[t]he sample of the Platform provided to the United States Copyright Office with 

SPSO’s Copyright application in 2015 [the “Deposit”] is the same as the website first 

appeared when published on July 3, 2014.’” (Doc. 64 at 18-19 (citing Doc 51, Ex. K at 

¶ 5).) However, in later filings in this Court, “Plaintiff admit[ed] that the Deposit includes 

material that was added after July 3, 2014.” (Doc. 64 at 23.) Based on the relevant 

copyright regulations, and the evidence of Plaintiff’s correspondence with the copyright 

office, the Court concluded that Plaintiff knowingly provided inaccurate information to the 

copyright office because “[t]he application was to register content (photographs and text) 

on the website as of the date of publication specified during the registration process, July 

3, 2014, but Plaintiff deposited the content that appeared on the website on a later date. 

Plaintiff, however, represented to the copyright office that the Deposit was the same as the 

website appeared on July 3, 2014.” (Id. at 24.) 

Therefore, as set forth above in Section I, the Court issued a request to the Register 

of Copyrights to determine whether the copyright office would have refused the 

registration with a July 3, 2014 publication date had it known that the deposit depicted 

content that existed on a later date. (Id. at 25.) In its response, the Register of Copyrights 

stated that it would have refused registration of Plaintiff’s copyright with a July 3, 2014 

publication date had it known that the submitted website included copyrightable content 

that was added after July 3, 2014. (Doc. 95 at 8; Doc. 72-1 at 8.) The copyright office 

further stated that it “would have demanded a copy of the deposit as published on July 3, 

2014 . . . .” (Doc. 72-1 at 8.) Alternatively, it would have “asked Plaintiff to limit its claim 

to material published on August 26, 2015, and to revert back to the 2015 year of 
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completion, and the August 26, 2015 date of publication, for the original application.” (Id.) 

If Plaintiff had “refused to limit the claim and revert back to the August 26, 2015 date of 

first publication and 2015 year of completion, the Acting Register would have refused 

registration.” (Id.) 

After the Court received the response from the copyright office, it permitted the 

parties to file second motions for summary judgment on the copyright infringement claim. 

(Docs. 73, 78, 79.) In ruling on these motions, the Court concluded that the copyright 

registration was invalid and granted summary judgment in Defendants’ favor on the 

copyright infringement claim. (Doc. 95.) As set forth in the Court’s orders on the 

copyright infringement claim, Plaintiff advanced several unpersuasive arguments in this 

litigation. (Doc. 64, 95.) Although the Court rejected these arguments, it is not clear that 

Plaintiff “should have known from the outset that its chances of success” in raising all of 

its arguments on the copyright infringement claim “were slim to none.” SOFA Entm’t, 

Inc., v. Dodger Prods., 709 F.3d 1273, 1279, 1280 (9th Cir. 2013) (concluding that 

plaintiff’s copyright infringement claim was objectively unreasonable when SOFA had 

been a plaintiff in a factually analogous Ninth Circuit case that supported defendant’s fair 

use defense). The Court, therefore, concludes that Plaintiff’s copyright infringement claim 

was not objectively unreasonable and, therefore, this factor does not weigh in favor of 

awarding attorney’s fees. 

6. Deterrence and Compensation

 When considering whether to award attorney’s fee under § 505, the courts should 

also consider whether there is a “need . . . to advance considerations of compensation and 

deterrence.” Kirtsaeng, 136 S. Ct. at 1986 (quoting Fogerty, 510 U.S. at 534). “Deterring 

non-meritorious lawsuits against defendants seen as having ‘deep pockets’ and 

compensating parties that must defend themselves against meritless claims are both 

laudable ends.” Scott v. Meyer, 2010 WL 2569286, at *3 (C.D. Cal. June 21, 2010). 

 The deterrence factor overlaps with the factors concerning motivation, 

frivolousness, and objective unreasonableness. King v. IM Global, 2017 WL 2620695, at 
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*3 (C.D. Cal. Jan. 25, 2017) (“Having previously determined that Plaintiff’s claim was 

neither frivolous nor objectively unreasonable, the Court cannot conclude that Plaintiff 

should have been deterred from pursuing it.”); Design Data Corp. v. Unigate Enter., Inc., 

2014 WL 5513541, at *2 (N.D. Cal. Oct. 31, 2014) (“There is value in deterring frivolous 

lawsuits . . . .”). Defendants have not shown a need for specific deterrence because there 

is no evidence that Plaintiff has a history of filing baseless or frivolous claims. 

Additionally, the Court is not persuaded that an award of attorney’s fees will deter others 

from baseless litigation considering the specific circumstances that were present in this 

case, which do not appear to be frequently litigated. Thus, the deterrence factor does not 

weigh in favor of awarding attorney’s fees. 

 The Court next considers whether there is a need “to advance [the] consideration of 

compensation.” Kirtsaeng, 136 S. Ct. at 1986. The need for compensation is mitigated 

when a prevailing defendant has “ample incentive” to litigate a meritorious defense without 

the added incentive of the possibility of recovering attorney’s fees. Epikhin, 2016 WL 

1258690, at *8 (concluding that the compensation factor did not weigh in favor of awarding 

attorney’s fees when the allegedly infringing product, a mobile application, had been 

downloaded more than one million times). Defendants’ motion for attorney’s fees 

mentions this factor but does not explain the need for compensation in this case. (Doc. 102 

at 7.) Plaintiff also fails to address this factor. (Doc. 106.) Considering the parties’ lack 

of argument on the need for compensation, the Court finds this factor neutral. 

7. The Goals of the Copyright Act 

 Some Ninth Circuit decisions issued before the Supreme Court’s decision in 

Kirtsaeng concluded that whether an award of fees would “further the purposes of the 

[Copyright Act],” was the “most important factor” in considering a fee request. See 

Glacier Films, 896 F.3d at 1041 (citing SOFA Entm’t, Inc., 709 F.3d at 1280). In Glacier 

Films, the Ninth Circuit stated that “[a]fter Kirtsaeng’s 2016 endorsement of a ‘totality of 

circumstances’ approach and its statement that the losing party’s reasonableness carries 

‘significant weight,’ it is unclear whether the purposes-of-the-Copyright-Act factor 
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remains the ‘most important’ one.” Glacier Films, 896 F.3d at 1040-41 (citing Kirtsaeng, 

136 S. Ct. at 1989). However, because “the guiding principles of the Copyright Act run 

throughout the other factors, it remains important.” Glacier Films, 896 F.3d at 1041. 

Therefore, the Court considers this factor. 

The goal of the Copyright Act is “to promote creativity for the public good.” 

Jackson v. Axton, 25 F.3d 884, 890 (9th Cir. 1994); see also Fogerty, 510 U.S. at 524 (“The 

primary objective of the Copyright Act is to encourage the production of original literary, 

artistic, and musical expression for the good of the public.”). That goal is served when 

defendants “advance a variety of meritorious copyright defenses” and defendants “should 

be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate 

meritorious claims of infringement.” Fogerty, 510 U.S. at 527. “Under the Copyright Act, 

the question is whether a successful defense of the action furthered the purposes of the Act, 

not whether a fee award would do so.” Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 

792, 815-16 (9th Cir. 2003). 

 Defendants’ successful defense to Plaintiff’s copyright infringement claim was 

based on the registration precondition to bringing a copyright infringement suit. See 28 

U.S.C. § 411(b)(1)(A). Defendants argue that their successful defense will deter the 

presentation of inaccurate information to the copyright office and, therefore, serves the 

purpose of the Copyright Act.7

 (Doc. 109 at 7.) Defendants, however, do not explain how 

deterring the presentation of inaccurate information to the copyright office advances the 

Copyright Act’s goal “to promote creativity for the public good.” Jackson, 25 F.3d at 890. 

Deterring the presentation of inaccurate information to the copyright office may promote 

the goal of encouraging the registration of valid copyrights, which in turn would further 

the goal of “having a robust federal register of existing copyrights.” See Cosmetic Ideas, 

Inc., 606 F.3d at 610. Copyright registration serves as a public record of the authorship 

and ownership of the claimed work. Brownstein v. Lindsey, 742 F.3d 55, 66 (3d Cir. 2014). 

 

7

 Defendants further argue that an award of attorney’s fees would serve several purposes. (Doc. 109 at 7.) The Court does not consider these arguments because the standard is whether the successful defense of a copyright infringement claim, not the attorney’s fee award, furthers the purpose of the Copyright Act. See Mattel, 353 F.3d at 815-16. 
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However, copyright registration is not required for copyright protection and is not 

jurisdictional.8

 See 17 U.S.C. § 408(a); Cosmetic Ideas, Inc., 606 F.3d at 614-15 (citing 

Reed Elsevier, Inc., v. Muchnick, 59 U.S. 154 (2010)). Therefore, the Court finds that the 

goal of promoting copyright registrations is different from the goal of promoting the 

“production of original literary, artistic, and musical expression for the good of the public.” 

See Fogerty, 510 U.S. at 524. The Court finds that the successful defense advanced in this 

case does not further the goal of the Copyright Act and this factor does not weigh in favor 

of awarding fees. 

 In sum, the Court finds that two factors weigh in favor of an award of fees 

(prevailing party and degree of success), four factors weigh against an award of fees 

(frivolousness, motivation, objective reasonableness, and advancing the goals of the 

Copyright Act), and one factor is neutral (deterrence and compensation). Therefore, after 

considering the relevant factors for an award of attorney’s fees in view of the primary 

objective of the Copyright Act, and giving more weight to the reasonableness factor, the 

Court concludes that, as a whole, the factors weigh against awarding attorney’s fees to 

Defendants on Plaintiff’s copyright infringement claim. 

B. Attorney’s Fees for Non-Copyright Claims

 Defendants assert that they are entitled to attorney’s fees under § 505 on Plaintiff’s 

non-copyright claims—the unfair competition claim in Count Two and the DMCA claims 

in Count Three—because those claims related to the copyright claim. (Doc. 102 at 7-8.) 

“‘[A] party entitled to attorney’s fees as a prevailing party on a particular [copyright] claim, 

but not on other claims in the same lawsuit, can only recover attorney’s fees incurred in 

defending against that one claim or any ‘related claims.’” Shame on You Prods, Inc., 893 

F.3d at 669 (quoting Traditional Cat Ass’n, Inc. v. Gilbreath, 340 F.3d 829, 833 (9th Cir. 

2003)). 

 

8

 The Court addressed the copyright registration process and the effect of copyright registration in its order on the parties’ second cross motions for summary judgment on the copyright infringement claim. (Doc. 95 at 12-13.) 
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Although not clearly articulated, Defendants appear to argue that the Court should 

award attorney’s fees on the non-copyright claims for the same reasons it should award 

attorney’s fees on the copyright infringement claim. Because the Court denied Defendants’ 

request for attorney’s fees on the copyright infringement claim, it applies the same analysis 

to deny attorney’s fees on the non-copyright claims. 

III. Attorney’s Fees under § 1203(b)(5) of the DMCA 

 Defendants alternatively move for attorney’s fees under 17 U.S.C. §1203(b)(5) on 

Plaintiff’s claims under § 1202(a), falsification of copyright management information 

(“CMI”), and § 1202(b), removal of CMI. (Doc. 102 at 8.) The DMCA authorizes a court, 

“in its discretion,” to allow recovery of costs and to award “reasonable attorney’s fees” to 

the prevailing party in an action under § 1201 or § 1202. 17 U.S.C. § 1203(b)(4), (5). 

Defendants assert that an award of attorney’s fees under § 1203(b)(5) of the DMCA is 

determined under the same factors as § 505 of the Copyright Act. (Doc. 102 at 8 (citing 

Drauglis v. Kappa Map Group, LLC, 128 F. Supp. 3d 46, 61 (D.D.C. 2015)). Defendants 

do not cite any binding authority to support this assertion and the Court has not found any 

Ninth Circuit decisions specifically addressing the factors that a district court should apply 

when considering a request for attorney’s fees under § 1203(b)(5). However, in the 

absence of such controlling authority, the Court finds it reasonable to apply the factors 

relevant to a fee determination under § 505. See Unicom Sys. Inc. v. Farmers Group, Inc., 

405 Fed. App’x 152, 155 (9th Cir. 2010) (stating that plaintiff’s prevailing party status 

made it eligible for a discretionary award of attorney’s fees under § 505 and § 1203(b) and 

concluding that the court did not abuse its discretion in applying the factors articulated by 

the Supreme Court in Fogerty to conclude that a fee award was appropriate under the 

Copyright Act). Therefore, the Court applies those factors to Defendants’ request for 

attorney’s fees under the DMCA § 1203(b)(5). 

 A. Prevailing Party 

Defendants assert that they were the prevailing party on Plaintiff’s § 1202(a) and 

(b) claims. (Doc. 102 at 8.) Plaintiff does not oppose that assertion. (Doc. 106.) Thus, 
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the Court concludes that Defendants were the prevailing party because the Court dismissed 

those claims against them with prejudice, which materially altered the relationship between 

Plaintiff and Defendants. See Cadkin, 569 F.3d at 1148-49; (Docs. 64, 95, 96, 97.) Thus, 

this factor weighs in favor of awarding fees. 

B. The Degree of Success Obtained 

The degree of success factor “weighs more in favor of a party who prevailed on the 

merits, rather than on a technical defense.” DuckHole Inc., 2013 WL 5797204, at *2. 

Defendants assert that they were “completely successful” on the DMCA claims because 

the Court granted summary judgment in their favor on both DMCA claims. (Doc. 102 

at 8.) Plaintiff does not address this factor and does not argue that Defendants prevailed 

on a “technical defense.” (Doc. 106 at 8.) The Court agrees that Defendants were 

successful on the DMCA claims because the Court granted summary judgment in their 

favor on those claims. (See Docs. 64 at 36-38; Doc. 95, Doc. 97.) Therefore, this factor 

also weighs in favor of awarding fees. 

C. The Frivolousness of Plaintiff’s Positions 

 A claim is frivolous when it is “clearly baseless,” involving “fantastic or delusional 

scenarios.” Perfect 10, Inc, 2005 WL 2007932, at *4. An unsuccessful claim is not 

necessarily frivolous. Neitzke, 490 U.S. at 329. “The standard for frivolousness appears 

to be ‘somewhat’ higher than the standard for objective reasonableness.” Epikhin, 2016 

WL 1258690, at *6 (citation omitted). 

 In the FAC, Plaintiff argued that Defendants violated § 1202(b) by knowingly 

removing from the webpage the following CMI: “Copyright 2015 Pool and Spa Parts 

Now,” with the intent to “facilitate or conceal [copyright] infringement.” (Doc. 39 at 

¶¶ 19-20, 48-50); 17 U.S.C. § 1202(b). Defendants argue that Plaintiff’s § 1202(b) claim 

was frivolous because Plaintiff admitted to the copyright office that Plaintiff’s standard 

practice was to create a series of fictitious names and, therefore, the allegedly removed 

copyright notice did not constitute CMI because it did not identify the owner or author of 
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the work.9 (Doc. 102 at 9 (citing Doc. 64 at 38)); 17 U.S.C. § 1202(c) (defining CMI). As 

discussed below in Section III.E, although Plaintiff’s § 1202(b) claim failed, the Court does 

not conclude that the claim was unreasonable. Thus, because “[t]he standard for 

frivolousness appears to be ‘somewhat’ higher than the standard for objective 

reasonableness,” Epikhin, 2016 WL 1258690, at *6, the Court cannot find that Plaintiff’s 

§ 1202(b) claim was frivolous. 

Defendants argue that Plaintiff’s § 1202(a) falsification claim was frivolous because 

it was “added as an afterthought in its Reply.” (Doc. 102 at 9 (citing Doc. 83 at 2).) As 

Defendants note, it was unclear whether Plaintiff was asserting a claim under § 1202(a) in 

the FAC. (Doc. 83 at 2.) However, the Court considered that claim and permitted 

Defendants to file a third motion for summary judgment directed to that claim. (Doc. 83.) 

The failure of the FAC to clearly articulate the § 1202(a) claim does not lead to the 

conclusion that the claim was frivolous. Therefore, this factor does not weigh in favor of 

awarding fees. 

D. Plaintiff’s Motive in Bringing the DMCA Claims 

“[T]he existence of bad faith or an improper motive in bringing or pursuing an action 

weighs in favor of an award of fees to a prevailing party.” Frost–Tsuji Architects, 2015 

WL 5601853, at *7. The motivation factor weighs in favor of awarding attorney’s fees 

when it is shown that a plaintiff’s “motivation in alleging . . . claims is to secure benefits 

other than merely redressing grievances.” Identity Arts, 2008 WL 820674, at *5. 

Defendants assert that Plaintiff’s sole motivation in bringing the § 1202 claims was 

to obtain attorney’s fees. (Doc. 102 at 9.) To support this assertion, Defendants rely on 

Plaintiff’s statement in its motion for leave to amend that its “‘only purpose in amending 

 

9

 Section 1202 creates liability for persons who either: (1) “intentionally remove or alter any [CMI],” without the authority of the copyright owner or the law, “knowing, or . . . having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an 

infringement”; or (2) distribute CMI “knowing that the [CMI] has been removed or altered 

without authority of the copyright owner or the law.” 17 U.S.C. § 1202(b). The definition 

of CMI includes the work’s title, the author’s name, and the copyright owner’s name, 

among other information. Id. at § 1202(c). 
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the complaint is to further allege the basis on which it is entitled to attorney’s fees under 

Section 1203.’” (Id. (quoting Doc. 35 at 7).) 

This statement indicates that Plaintiff’s motive in amending the complaint was to 

clarify the basis for its attorney’s fees request, but it does not establish that Plaintiff’s only 

motive in bringing claims under § 1202 was to obtain attorney’s fees. In granting the 

motion to amend, the Court noted that the complaint indicated that Plaintiff intended to 

bring a claim under §§ 1201 or 1202 because it sought attorney’s fees under § 1203, and 

because the complaint included an exhibit that showed what “was alleged to be a violation 

of § 1202.” (Doc. 38 at 3.) The Court found that Plaintiff “apparently believed that the 

§ 1203 allegations and Exhibit F (to the original complaint) were sufficient to allege 

a . . . claim for a violation of § 1202,” at least until Defendants first indicated, at a 

settlement conference, that they did not believe the § 1203 allegations were adequate. (Id.) 

The Court found good cause to allow Plaintiff to amend the complaint. (Id.) Based on the 

Court’s prior conclusion that Plaintiff had intended to allege, and thought it had sufficiently 

alleged, a § 1202 claim in the complaint, the Court rejects Defendants’ argument that 

Plaintiff’s amendment of the complaint to supplement its § 1202 allegations evidences its 

improper motive in bringing claims under § 1202. Therefore, this factor does not weigh in 

favor of an award of fees. 

E. Objective Reasonableness of Plaintiff’s Claims 

When determining whether to award fees, the court also considers the objective 

reasonableness of the losing party’s position “both in the factual and in the legal 

components of the case.” Kirtsaeng, 136 S. Ct. at 1983, 1985. 

1. Section 1202(b) Claim 

Defendants argue that Plaintiff’s § 1202(b) claim was unreasonable because 

Plaintiff knew that the copyright owner name, allegedly removed by Defendants, was a 

fictitious entity and, therefore, it did not constitute CMI as defined in § 1202(c). (Doc. 102 

at 10.) At the time of the Court’s June 9, 2017 Order, there was very limited controlling 

case law interpreting § 1202(c) of the DMCA. See Jacobsen v. Katzer, 609 F. Supp. 2d 
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925, 934 (N.D. Cal. 2009) (noting that the law on the definition and application in practice 

of the term CMI is scant); see also Friedman v. Live Nation Merch., Inc., 833 F.3d 1180, 

1187 n.3 (9th Cir. 2016) (noting, but not interpreting, the definition of CMI); Morgan v. 

Assoc. Press, 2016 WL 69534233, at *4 (C.D. Cal. Mar. 16, 2016) (noting that the Ninth 

Circuit had not yet ruled on what constitutes CMI under § 1202(c) of the DMCA). Thus, 

the Court relied on a district court decision and the statute itself to resolve the § 1202(b) 

claim. (Doc. 64 at 36-37.) Considering the limited amount of controlling authority on this 

issue, the Court cannot conclude that Plaintiff “should have known from the outset that its 

chances of success” in raising its § 1202(b) claim “were slim to none.” See SOFA Entm’t, 

Inc., 709 F.3d at 1280. Therefore, the Court concludes that the § 1202(b) claim was not 

objectively unreasonable. 

2. Section 1202(a) Claim 

Defendants argue that Plaintiff’s § 1202(a) claim was objectively unreasonable 

because, when Plaintiff brought that claim, there was existing authority holding that a 

generic copyright notice at the bottom of a webpage does not violate § 1202(a). (Doc. 102 

at 10 (citing Personal Keepsakes, Inc. v. Personalizationmall.com, Inc., 975 F. Supp. 2d 

920, 929 (N.D. Ill. 2013).) Defendants assert that this case is distinguishable from Drauglis 

v. Kappa Map Group, LLC, 128 F. Supp. 3d 46, 61 (D.C. Colo. 2015). In Drauglis the 

court declined to award attorney’s fees under § 1203 because it denied the plaintiff’s claims 

based on case law that did not exist when plaintiff filed the lawsuit. See Drauglis, 128 F. 

Supp. 3d at 61. 

In their third motion for summary judgment, Defendants argued “that they did not 

violate § 1202(a) by placing the We Fix Ugly Pools (“WFUP”) copyright notice at the 

bottom of the webpage allpoolsupplies.com (“APS), which included Plaintiff’s 

copyrighted photographs, because the copyright notice was not ‘conveyed in connection 

with’ Plaintiff’s photographs and, therefore, was not false CMI.” (Doc. 96 at 4-5.) 

Defendants’ argument was based on the definition of CMI in § 1202(c). (Id. at 7.) 
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Defendants cited several district court decisions from outside the Ninth Circuit, including 

Personal Keepsakes, to support their argument. (See id.) 

In its order on the third motion for summary judgment, the Court stated that “[t]he 

parties have not cited, and the Court has not found, a Ninth Circuit decision interpreting 

the definition of CMI in § 1202(c).” (Doc. 96 at 9.) However, other courts had interpreted 

that section and “concluded that to satisfy the statutory requirement that CMI is ‘conveyed 

in connection with’ the copyrighted material, a copyright notice must be ‘close to’ to the 

work.” (Id. (quoting Personal Keepsakes, 975 F. Supp. 2d at 929).) As Defendants note 

in their motion for attorney’s fees, the Court relied, in part, on Personal Keepsakes in 

granting summary judgment in Defendants’ favor on the § 1202(a) claim. (See Doc. 96 at 

10-12.) However, the existence of non-binding authority that was contrary to Plaintiff’s 

position on its § 1202(a) claim does not render that claim unreasonable. But see SOFA 

Entm’t, Inc., 709 F.3d at 1280 (concluding that plaintiff’s copyright infringement claim 

was objectively unreasonable when SOFA had been a plaintiff in a factually analogous 

Ninth Circuit case that supported defendant’s fair use defense). Considering the lack of 

controlling precedent on the issues related to Plaintiff’s § 1202(a) claim, the Court cannot 

conclude that Plaintiff “should have known from the outset that its chances of success” in 

raising its § 1202(a) claim “were slim to none.” Id. Therefore, the Court concludes that 

the § 1202(a) claim was not objectively unreasonable and this factor does not weigh in 

favor of an award of fees. 

The parties did not address any additional factors that may be relevant to the 

determination of an award of attorney’s fees under § 1203(b)(5). (See Doc. 102 at 8-11, 

Doc. 106 at 8; Doc. 109 at 8.) Therefore, Defendants have not shown that any other factors 

weigh in favor of their request for attorney’s fees on Plaintiff’s DMCA claims. Based on 

its review of the relevant factors addressed by the parties, the Court concludes that 

Defendants are not entitled to attorney’s fees on the DMCA claims. 
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IV. Conclusion 

 For the reasons stated in this Order, the Court concludes that Defendants are not 

entitled to an award of attorney’s fees and costs. 

Accordingly, 

IT IS ORDERED that Defendants’ motion for attorney’s fees and costs (Doc. 102) 

is DENIED. 

Dated this 11th day of March, 2019.