1. No category

Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 1 of 26
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
Agence France Presse,
Plaintiff,
1O-cv-2730 (AJN)
-v-
MEMORANDUM &
ORDER
Daniel Morel,
Defendant, Counterclaim
Plaintiff,
-v-
Agence France Presse,
Getty Images (US)
Counterclaim Defendants.
ALISON J. NATHAN, District Judge:
This case commenced in March 2010 when Plaintiff Agence France Presse ("AFP")
sought a declaratory judgment establishing that it did not infringe on the copyrighted
photographs of the Defendant, Daniel Morel ("Morel"), a photojournalist covering the 2010
earthquake in Haiti and its tragic aftermath. See Dkt. No. 1. Shortly thereafter, Morel filed a
counterclaim against a number of media outlets, including AFP and Getty Images (US) ("Getty")
(collectively the "Counterclaim Defendants") for republishing his photographs without proper
license. See Dkt. No. 4. After settling with several Defendants on damages, see, e.g., Dkt. Nos.
49, 56, and proceeding through motion practice, see Dkt. Nos. 49, 192, an eight-day trial was
held in November 2013, resulting in a $1.2 million verdict for Morel. See Dkt. No. 305.
Two distinct, but related, issues are presently before the Court. First, Morel moves for
the Counterclaim Defendants to pay his attorneys' fees and costs pursuant to 17 U.S.C. § 505.
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Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 2 of 26
See Dkt. No. 338. Second, Morel's former counsel, Barbara Hoffman of The Hoffman Law Firm
("Hoffman") moves to fix the sum of her charging lien on the judgment Morel was awarded at
trial. See Dkt. No. 341. Hoffman represented Morel from March 5, 2010 through February 12,
2013, at which time she was discharged as Morel's attorney without cause. See Dkt. Nos. 202204, 207; October 31, 2014 Declaration of Daniel Morel ("Morel
Deel.")~
8. Morel retained the
counsel of Willkie Farr & Gallagher LLP ("Willkie Farr") on August 30, 2011. See Dkt. No. 90.
After Hoffman's withdrawal from the case, Willkie Farr continued to represent Morel, including
up through the present motions.
Having carefully reviewed the parties' submissions, and for the reasons below, Morel's
motion is DENIED. Hoffman's motion is GRANTED with the value of her charging lien fixed
at $164,580.70.
I.
MOREL'S § 505 MOTION FOR ATTORNEYS' FEES
a.
Legal Standard
Section 505 of the Copyright Act states that
[i]n any civil action under this title, the court in its discretion may
allow the recovery of full costs by or against any party other than
the United States or an officer thereof. Except as otherwise provided
by this title, the court may also award a reasonable attorney's fee to
the
prevailing
party 1
as
part
of
the
costs.
17 U.S.C. § 505.
As the plain text of the statute makes clear, "[a]n award of attorney's fees and costs is not
automatic but rather lies within the sole and rather broad discretion of the Court." Baker v.
Urban Ou(fitters, Inc., 431 F. Supp. 2d 351, 357 (S.D.N.Y. 2006) a:ff'd, 249 F. App'x 845 (2d
1
The parties do not dispute that Morel was the "prevailing party" for purposes of this motion. Indeed, no such
dispute could exist in light of Morel's substantial recovery at trial. See Buckhannon Bd. and Care Home, !Ne. v. W
Va. Dep 't of Health & Human Res., 532 U.S. 598, 600 (2001) (noting that a prevailing party is one who "[s]ecures a
judgment on the merits or a comt-ordered consent decree").
2
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 3 of 26
Cir. 2007) (citing Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1011 (2d Cir. 1995)). The
touchstone consideration in the awarding of fees or costs under § 505 is whether doing so
furthers the purposes of the Copyright Act. See Matthew Bender & Co. v. W Pub. Co., 240 F.3d
116, 124-25 (2d Cir. 2001) (citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 535 n.19 (1994)); see
also Melville B. Nimmer & David Nimmer, NIMMER ON COPYRIGHT§ 14.10[D][2]
("Nimmer"); Mitek Holdings, Inc. v. Arce Eng'g Co., 198 F.3d 840, 842-43 (11th Cir. 1999)
("The touchstone of attorney's fees under§ 505 is whether imposition of attorney's fees will
further the interests of the Copyright Act ... ")
The Supreme Court has shed some light on what considerations should be taken into
account in determining whether the awarding of fees and costs would further the purposes of the
Copyright Act. While cautioning that "[t]here is no precise rule or formula for making
[attorneys' fees] determinations," the Court in Fogerty nonetheless identified "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" as relevant factors. Fogerty, 510 U.S. at 534 n.19. See also Matthew Bender & Co.,
240 F.3d at 21 (applying the Fogerty factors).
In the wake of Fogerty, appeals courts, including the Second Circuit, have afforded
"substantial weight" to the objective reasonableness factor in particular. Bryant v. Media Right
Prods., Inc., 603 F.3d 135, 144 (2d Cir. 2010) (citing Matthew Bender & Co., 240 F.3d at 122
(collecting cases)). The Second Circuit has explained that the "emphasis on objective
reasonableness is firmly rooted in Fogerty's admonition that any factor a comi considers in
deciding whether to award attorneys' fees must be 'faithful to the purposes of the Copyright
Act."' Matthew Bender & Co., 240 F.3d at 122 (citing Fogerty, 510 U.S. at 534 n.19).
3
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 4 of 26
Nonetheless, "a finding of objective reasonableness [does not] necessarily preclude[] the award
of fees. In an appropriate case, the presence of other factors might justify an award of fees
despite a finding that the nonprevailing party's position was objectively reasonable." Id. (citing
Matthews v. Freedman, 157 F.3d 25, 29 (1st Cir. 1998) ("Depending on other circumstances, a
district court could conclude that the losing party should pay even if all of the arguments it made
were reasonable.")).
The prominence of objective reasonableness as a factor is sensible in light of the fact that
the interests of the Copyright Act are furthered by "encouraging the raising of objectively
reasonable claims and defenses, which may serve not only to deter infringement but also to
ensure 'that the boundaries of copyright law [are] demarcated as clearly as possible' in order to
maximize the public exposure to valuable works." Mitek Holdings, Inc., 198 F.3d at 842-43
(quoting Fogerty, 510 U.S. at 526-27). Indeed, when "close infringement cases are litigated,
copyright law benefits from the resulting clarification of the doctrine's boundaries. But because
novel cases require a plaintiff to sue in the first place, the need to encourage meritorious defenses
is a factor that a district court may balance against the potentially chilling effect of imposing a
large fee award on a plaintiff, who, in a particular case, may have advanced a reasonable, albeit
unsuccessful, claim." Lotus Dev. Corp. v. Borland Int'!, Inc., 140 F.3d 70, 75 (1st Cir. 1998).
Accordingly, in order to supp01i the further development of useful copyright jurisprudence, and
thus further the purposes of the Copyright Act, district courts are disinclined to award fees in
cases that are close calls or which present novel legal issues or theories. See, e.g., Earth Flag
Ltd. v. Alamo Flag Co., 154 F. Supp. 2d 663, 666 (S.D.N.Y. 2001) ("Indeed, a court should not
award attorneys' fees where the case is novel or close because such a litigation clarifies the
boundaries of copyright law."); Canal+ Image UK Ltd. v. Lutvak, 792 F. Supp. 2d 675, 683
4
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 5 of 26
(S.D.N.Y. 2011) (same); Belair v. MGA Entm 't, Inc., 09-cv-8870 (SAS), 2012 WL 1656969, at
*2 (S.D.N.Y. May 10, 2012) (same); John Wiley & Sons, Inc. v. Kirtsaeng, 08-cv-7834 (DCP),
2013 WL 6722887, at *2 (S.D.N.Y. Dec. 20, 2013) (same).
In light of this, a court's discretion should not weigh in favor of a plaintiff or defendant,
nor does it matter that a case is brought as a declaratory action. Because copyright jurisprudence
is equally served by the delineation of meritorious defenses, as by theories of liability,
"[p]reveailing plaintiffs and prevailing defendants are to be treated alike." Fogerty, 510 U.S. at
534. See also Nimmer§ 14.lO[B][l][b] (explaining that the "same considerations would appear
to control [the awarding of attorneys' fees] any time the action at hand requires construction of
the Copyright Act," including when a declaratory action). The Court now turns to each Fogerty
factor in order to assess the merits of Morel's request.
b.
Analysis
Briefly stated, Morel fought a fair fight and won. The fact that this was a close case on
the merits, involving novel legal issues, persuades the Court that the purposes of the Copyright
Act are not furthered by awarding fees and costs pursuant to § 505. Appeal to each of the
Fogerty factors further reinforces this conclusion. Because of its relative significance, the Court
first assesses the objective reasonableness of the arguments proffered by the Counterclaim
Defendants.
i.
Objective Reasonableness
Claims are objectively umeasonable when they "have no legal or factual support." Viva
Video, Inc. v. Cabrera, 9 F. App'x 77, 80 (2d Cir. 2001). See also Silberstein v. Fox Entm 't
Grp., Inc., 536 F. Supp. 2d 440, 444 (S.D.N.Y. 2008) ("the courts of this Circuit have generally
concluded that only those claims that are clearly without merit or otherwise patently devoid of
5
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 6 of 26
legal or factual basis ought to be deemed objectively unreasonable") (quoting Penguin Books
US.A. Inc. v. New Christian Church ofFull Endeavor, Ltd., 96-cv-4126 (RWS), 2004 WL
728878, at *3 (S.D.N.Y. Apr. 6, 2004)). However, the "mere fact that a [party] has prevailed
does not necessarily equate with an objectively unreasonable claim." Berry v. Deutsche Bank
Trust Co. Am., 632 F. Supp. 2d 300, 305 (S.D.N.Y.2009) (citation, quotation marks, and ellipsis
omitted).
Morel contends that the Counterclaim Defendants advanced a number of objectively
unreasonable defenses and arguments in the hope that they would "wear down" Morel, including
an "unsupportable" reading of the Twitter terms of service, their repeated insistence that they
were not willful infringers, and Getty's contention that they are the equivalent of an internet
service provider. See Dkt. No. 339 at 9. Counterclaim Defendants, in turn, point to a number of
their successes throughout the litigation to highlight the reasonableness of their claims. This
includes (1) the fact that they successfully contested Morel's Lanham Act claims at the motion to
dismiss stage; (2) that they winnowed the number of photographs at issue from thirteen to eight
(thus substantially reducing their damages exposure), (3) the fact that Morel's potential damages
were significantly reduced due to the Court crediting Counterclaim Defendants' interpretation of
the Copyright Act at summary judgment, (4) successfully limiting Morel's potential damages
under the Digital Millennium Copyright Act ("DMCA"); (5) Getty Images' successful DMCA
safe harbor defense; (6) an appropriate, if ultimately unsuccessful, defense on the question of
willful infringement; and (7) the novelty and reasonableness of AFP's license defense.
Morel does not offer a compelling response to this. First, he contends that these
arguments were "soundly rejected by the Court and the jury" and thus the "same result should
follow here." See Morel Reply Br. at 4. But as already explained, the fact that a party's factual
6
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 7 of 26
or legal theory was not ultimately successful does not mean it was objectively unreasonable. See
Berry, 632 F. Supp. 2d at 305. Rather, the inquiry is whether the theory was "clearly without
merit or otherwise patently devoid of legal or factual basis." Chivalry Film Prods. v. NBC
Universal, Inc., 05-cv-5627 (GEL), 2007 WL 4190793, at *2 (S.D.N.Y. Nov. 27, 2007) (quoting
Penguin Books, 2004 WL 728878, at *3) (emphasis added). Beyond that, Morel primarily
objects to Getty and AFP's litigation tactics, which bear little on the particular question of
whether they put forward plausibly meritorious legal and factual theories.
The Court concludes that, to varying degrees, each of the aforementioned positions
forward by AFP and Getty were objectively reasonable. The last one, in particular, raised a
relatively novel issue, the adjudication of which may, in its own small way, help further define
the contours of copyright law in the digital age. The advent of social media, and the internet
generally, poses a myriad of issues for both copyright holders and those seeking to license or
exploit their work. The federal courts have recognized that "the whole area of social media
presents thorny and novel issues with which courts are only now coming to grips." E. E. 0. C. v.
Original Honeybaked Ham Co. o,fGeorgia, 11-cv-02560 (MSK) (MEH), 2012 WL 5430974, at
*1 (D. Colo. Nov. 7, 2012). See also Higgins v. Koch Dev. Corp., 11-cv-81 (RLY) (WGH),
2013 WL 3366278, at *2 (S.D. Ind. July 5, 2013) ("Postings on Facebook and other social media
present a unique challenge for courts, due to their relative novelty and their ability to be shared
by or with someone besides the original poster."); Miller v. Face book, Inc., 1O-cv-264 (WHA),
2010 WL 2198204, at * 1 (N.D. Cal. May 28, 2010) (noting the "slipperiness of enforcing
intellectual property rights in a world where creating and dispersing infringing material to the
public via social networking websites has become all too easy"). Cf United States v. Meregildo,
7
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 8 of 26
883 F. Supp. 2d 523, 525 (S.D.N. Y. 2012) (noting that social media presents novel questions
regarding the Fourth Amendment and the expectation of privacy).
Beyond the courts, academics and practitioners are similarly coming to terms with the
implications of social media and traditional copyright law. 2 Indeed, a substantial amount of
commentary discussed the relative novelty of the issue raised in this case 3 and at least some of it
suggested that it has had a material impact on social media platforms' terms of service. 4
Furthermore, resolution of this case has only chipped away at the number of questions social
media poses for copyright law. As one article has noted, "The Morel case signifies how the
Internet is playing havoc with the principles of copyright law." 5 In light of the 'havoc'
2
See, e.g., Rebecca Haas, Twitter: New Challenges to Copyright Law in the Internet Age, 10 J. Marshall Rev. Intel!.
Prop. L. 231, 248 (2010) (anticipating the challenges of enforcing copyright through media like twitter); Kirsten M.
Koepsel, Social Networks and the Uneasy Relationship with Copyright Law, Md. B.J., November/December 2012,
at 20, 27 (advising practioners on how to advise clients with social media and copyright concerns).
3
See, e.g., Patricia Aufderheide, Journalists, Social Media and Copyright: Demystifying Fair Use in the Emergent
Digital Environment, 9 J. Bus. & Tech. L. 59, 60 (2014) (discussing the case and how it is part ofa "paradigm shift"
that has "thrown journalists into the world of social media, both as users and practitioners. In pmticular, journalistic
re-use of social media is nearly endemic. At the same time, it is fraught, as demonstrated by lawsuits and--much
more frequently--threatening cease-and-desist letters."); Stephen McJohn, Top Tens of2013: Patent, Trademark,
Copyright, and Trade Secret Cases, 12 Nw. J. Tech. & Intel!. Prop. 177, 207 (2014) (noting that the "case
emphasizes the role of traditional contract law in the continuing evolution of cyberspace law."); Daxton R. "Chip"
Stewart, Ph.D., LL.M., Can I Use This Photo I Found on Facebook? Applying Copyright Law and Fair Use Analysis
to Photographs on Social Networking Sites Republished for News Reporting Purposes, 10 J. Telecomm. & High
Tech. L. 93, 94 (2012) (noting that the issue of reusing images on social media is "a vexing one for news media,"
that it has not been fully examined by the courts, and that it continues to be debated by scholars and professionals);
Peter L. Skolnik, Navigating Social Media Copyrights, N.J. Law., October 2013, at 5, 6 (noting that courts have only
"begun to grapple with the issue of whether the typically broad social media license permits others to exploit your
copyrights commercially") (emphasis in original); Elizabeth White, The Berne Convention's Flexible Fixation
Requirement: A Problematic Provision for User-Generated Content, 13 Chi. J. Int'! L. 685, 697 (2013) (discussing
Morel and noting that it "remains an open question" whether there needs to be development of international
standards for copyrighting user-generated content on social media); Theodore C. Max, Trademarks in the Veldt: Do
Virtual Lawyers Dream of Electric Trademarks?, 101 Trademark Rep. 282, 303 (2011) (noting that Morel was
"instructive" in assessing how terms of service impact content provider liability).
4
See Kyle-Beth Hilfer, Esq., Minimizing Legal Risks for Clients Using Social Media to Advertise and Market Their
Brands, 38 Westchester B.J. 35, 40 (2012) (noting that this case "has already led to changes in social media
platforms' treatment of copyrights.") But see also Toby Butterfield, Ben Bartlett, Coming to Te1ms: Hidden Traps
for Media Entities and Producers in Website Terms of Use Agreements, 3 Landslide 42, 43 (2011) (noting that the
"Morel decision may be something of a wake-up call to the dangers of using even widely available content posted
online" and that it "remains to be seen what measures media entities may take to avoid similar lawsuits in the
future.")
5
Michael L. Rustad, et al., Copyrights in Cyberspace: A Roundup of Recent Cases, 12 J. High Tech. L. 106 (2011).
8
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 9 of 26
surrounding many of the core issues raised by this case, and the questions raised for subsequent
cases, 6 it is all the more impo1iant that litigants be encouraged to test objectively reasonable legal
theories in order to better develop the jurisprudential landscape. This weighs strongly against the
awarding of attorneys' fees in this case.
Beyond this particularly important consideration, the other successes claimed by AFP and
Getty throughout the litigation reinforce the fact that this was not a runaway case for Morel. The
Counterclaim Defendants won on several significant issues at both the motion to dismiss and
summary judgment stages. See Dkt. No. 42 at 22 (granting motion to dismiss Morel's Lanham
Act claims and vicarious infringement claims against CBS and TBS, while denying motion to
dismiss his copyright infringement and DMCA claims against AFP, Getty, CBS, and TBS, and
his contributory and vicarious infringement claims against AFP and Getty); Dkt. No. 192 at 58
(granting Morel's motion for summary judgment as to copyright infringement, but denying it as
to the scope of statutory damages under the Copyright Act and DMCA). These considerations
do not weigh as strongly against the awarding of fees and costs, but at a minimum they do not
support the theory that awarding § 505 fees and costs in this case would promote the purpose of
the Copyright Act.
ii.
Frivolousness
This Fogerty factor similarly weighs against Morel's request for fees and costs. A
complaint is frivolous "where it lacks an arguable basis either in law or in fact." Neitzke v.
Williams, 490 U.S. 319, 325 (1989). See also Hallfordv. Fox Entm't Grp., Inc., 12-cv-1806
6
See, e.g., Rustad, et al., Copyrights in Cyberspace (noting that after Morel "[t]he next wave of litigation will focus
on whether tweets are copyrightable."); White, The Berne Convention's Flexible Fixation Requirement (citing
Rustad, et al. 's prediction that the next wave of litigation will focus on whether tweets are copyrightable).
9
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 10 of 26
(WHP), 2013 WL 2124524, at *1 (S.D.N.Y. Apr. 18, 2013) (an argument "is frivolous when
there is indisputably absent any factual or legal basis" for it). Despite their facial similarity, the
"Second Circuit ... has recognized that frivolousness and objective unreasonableness are not
necessarily coextensive." See Gordon v. McGinley, 11-cv-1001 (RJS), 2013 WL 1455122, at *2
(S.D.N.Y. Mar. 28, 2013), appeal withdrawn (July 23, 2013) (citing Matthew Bender & Co., 240
F.3d at 122 ("An objectively unreasonable argument is not necessarily frivolous or made in bad
faith.")). Nonetheless, the parties do not briefthe issue of frivolousness separately from
objective reasonableness and the Court concludes that AFP and Getty's posture in this litigation
was not frivolous for the same reasons. See Kirtsaeng, 2013 WL 6722887, at *3 (concluding
claim was not frivolous for the same reasons it was not deemed to be objectively unreasonable).
iii.
Motivation
This consideration is similarly derivative of the Court's analysis of AFP and Getty's
objective reasonableness. That is because a party is improperly motivated where it asserts claims
"not because of [their] inherent merit," but rather because it seeks to "knowingly gamble[] on an
unreasonable legal theory in order to achieve a secondary gain - in this case, the leveraging of a
settlement ... " Torah Safi Ltd. V Drosnin, OO-cv-5650, 2001 WL 1506013, at *5 (S.D.N.Y.
Nov. 27, 2001).
Morel contends that the impropriety of AFP and Getty's motivation is evinced by the fact
that AFP initiated the action through its request for declaratory judgment and further through
their use of intimidation tactics throughout the litigation. Most notably, Morel insists that AFP
filed claims for commercial defamation solely with the "goal of gagging Mr. Morel and his
attorney" and further that their motivation was "purely one of intimidation: to prevent Mr. Morel
10
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 11 of 26
from asserting his rights and reaching out to third parties who had acquired the misappropriated
photographs from the wrong-doing agency, AFP." See Dkt. No. 339 at 8.
The record is sparse on this issue. AFP withdrew its defamation claims purportedly on
the rationale that after "the filing of the complaint, the complained-of conduct ceased, so AFP
stipulated to dismissal of the commercial defamation count." See Dkt. No. 239 at 2. Morel
interprets this as a sign that AFP's "extra-judicial mission was accomplished" and thus further
evidence of bad faith and frivolousness. See Dkt. No. 339 at 8. Simply put, the Court is not in a
position to adequately assess Morel's contention on this issue. The defamation claims were
never tested and were voluntarily dismissed by AFP in August 2010, or nearly four-and-a-half
years ago. See Dkt. No. 34. They were thus not a significant issue throughout the course of this
now five year litigation. Accordingly, the defamation count in AFP's complaint is at most a
neutral factor in the Court's analysis. At least as relevant is the fact that, on the eve of trial, AFP
and Getty offered Morel a settlement of $2 million, substantially above the statutory maximum
of $1.2 million identified during summary judgment. See Morel Reply Br., Ex. A. See Bryant,
603 F.3d at 144 (where appellees' defenses were not objectively unreasonable and where they
made a good faith attempt at settlement in anticipation of trial, district court did not abuse its
discretion in declining to award attorneys' fees).
iv.
Compensation and Deterrence
In Fogerty, the Supreme Court observed that the "expense of any letigation [sic] is
considerable. Unless, therefore, some provision is made for financial protection to a litigant, if
successful, it may not pay a party to defend rights, even if valid, a situation opposed to justice ...
It is increasingly recognized that the person who forces another to engage counsel to vindicate,
or defend, a right should bear the expense of such engagement and not his successful opponent ..
11
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 12 of 26
."Fogerty, 510 U.S. at 529, 114 S.Ct. 1023" (quoting W. Strauss, Damage Provisions of the
Copyright Law, Study No. 31 (H. Judiciary Comm. Print 1960)) (internal quotation marks
removed). Indeed, "[c]onsiderations of deterrence may support an award of attorney's fees to the
prevailing party where none of the other relevant factors justify denying such an award,
especially when willful infringement has been found." Nat'! Football League v. PrimeTime 24
Joint Venture, 131 F.Supp.2d 458, 484 (S.D.N.Y. 2001).
This factor is the most favorable for Morel, insofar as he was an individual litigating
against substantially larger opponents. Although he was represented on a contingency-fee basis,
he nonetheless faced the greater challenge in sustaining prolonged litigation. 7 Nonetheless, the
Court finds the purposes of the Copyright Act already substantially advanced by vi1iue of
Morel's significant damages award and does not believe there is a need to further deter the
Counterclaim Defendants, who promoted a number of objectively reasonable legal theories. See
Ariel(UK) Ltd. v. Reuters Grp. PLC, 05-cv-9646 (JFK), 2007 WL 194683, at *5 (S.D.N.Y. Jan.
24, 2007) ("The Court recognizes that Defendants incurred considerable expense in defending
the copyright claims. Nevertheless, an award of fees and costs would tend to prohibit potential
future claimants from litigating questions of fact and law that are not objectively unreasonable
and therefore would be contrary to the policies that underlie the Copyright Act."). See also
Psihoyos v. John Wiley & Sons, Inc., 11-cv-1416 (JPO), 2013 WL 1285153, at *5 (S.D.N.Y.
Mar. 29, 2013) reconsideration denied, 11-cv-1416 (JPO), 2013 WL 4441475 (S.D.N.Y. Aug.
20, 2013) (declining motion for fees because there was no "need to.further deter Defendant's
behavior" and concluding "for the same reasons noted above with respect to objective
7
Even this fact is ofonly limited use to Morel. See Kirtsaeng, 2013 WL 6722887, at *6 ("But like the degree of
success obtained, financial disparity between the parties is a consideration more relevant to 'determining the
magnitude of an award once it has been resolved that such an award is appropriate.') (quoting Penguin Books, 2004
WL 728878, at *5).
12
Case 1:10-cv-02730-AJN Document 367 Filed 03/23/15 Page 13 of 26
unreasonableness ... that the compensation and deterrence purposes underlying the Copyright
Act are adequately served by the jury's award").
Moreover, Morel's appeal to Klinger v. Conan Doyle Estate, Ltd., 761 F.3d 789 (7th Cir.
2014) is inapposite. In that case, the Seventh Circuit concluded that a plaintiff had "performed a
public service" in pursuing a copyright claim worth only $5,000 and thus was entitled to
attorneys' fees. Id. at 792. But in that case the plaintiff successfully sought declaratory relief
entitling him to publish works featuring characters from Sir Arthur Conan Doyle's Sherlock
Holmes stories. Id. at 790. In other words, he did not receive any damages. Moreover, Doyle's
estate appealed the plaintiffs victory, an appeal characterized by Judge Posner as "border[ing]
on the quixotic." Id. Accordingly, the plaintiff in Klinger was forced to pay additional
attorneys' fees on appeal to protect his declaratory judgment. It was these particular fees that he
was awarded by the Seventh Circuit. Id. at 792. That is a far cry from the current case where
Morel, first, has received a damages award of $1.2 million, and second, has not been forced to
litigate against "quixotic" positions, either at trial or (to date) on appeal. In sum, this factor is
similarly neutral - while saddling AFP and Getty with further expense would, naturally, act as a
deterrent to copyright infringement, such a punitive measure is not necessary in light of the
substantial damages Morel received at trial.
c.
Summary
In conclusion, the Court reiterates that Morel fought and won a fair fight, resulting in a
substantial award from the jury. The goals of the Copyright Act would not be further served by
awarding him attorneys' fees and costs, particularly in light of the relatively novel issues at stake
in the case. 8
8
Morel also moves for fees and costs under the 17 U.S.C. § 1203(b)(5), the DMCA's equivalent of§ 505. Courts
consider fees under§ 1203(b)(5) by reference to "the same four factors [as] when evaluating [a] motion for
attorneys' fees brought under 17 U.S.C. § 505." Dahn World Co., Ltd. v. Chung, 06-cv-2170, 2009 WL 277603, at
13
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II.
HOFFMAN'S MOTION TO FIX THE SUM OF THE CHARGING LIEN
a.
Legal Standard
New York Judiciary Law § 475 provides that
From the commencement of an action ... in any comt or before any
state, municipal or federal department ... or the service of an answer
containing a counterclaim ... the attorney who appears for a party
has a lien upon his or her client's cause of action, claim or
counterclaim, which attaches to a verdict, report, determination,
decision, award, settlement, judgment or final order in his or her
client's favor, and the proceeds thereof in whatever hands they may
come; and the lien cannot be affected by any settlement between the
parties before or after judgment, final order or determination.
The statutory charging lien "is a device to protect counsel against 'the knavery of his
client,' whereby through his effort, the attorney acquires an interest in the client's cause of
action." Butler, Fitzgerald & Potter v. Sequa Corp., 250 F.3d 171, 177 (2d Cir. 2001) (quoting
Jn re City of New York, 5 N.Y.2d 300, 307 (1959)). "The lien is predicated on the idea that the
attorney has by his skill and effmt obtained the judgment, and hence 'should have a lien thereon
for his compensation, in analogy to the lien which a mechanic has upon any article which he
manufactures."' Id. (quoting Williams v. Ingersoll, 89 N. Y. 508, 517 (1882)). The Second
Circuit has "long recognized that the lien created by section 475 ... is enforceable in federal
courts in accordance with its interpretation by New York courts." !tar-Tass Russian News
Agency v. Russian Kurier, Inc., 140 F.3d 442, 449 (2d Cir. 1998) (quoting In re Chesley v. Union
Carbide Corp., 927 F.2d 60, 67 (2d Cir. 1991)).
Although the charging lien has its roots in common law, see !tar-Tass, 140 F.3d at 449
(citing Goodrich v. McDonald, 112 N.Y. 157, 163 (1889)), it is an equitable doctrine and the
"overriding criterion for determining the amount of a charging lien is that it be 'fair."' Sutton v.
*2 (D. Md. Feb. 5, 2009) (citation omitted). Accordingly, Morel's request for fees and costs under the DMCA is
denied on the same grounds as his request under the Copyright Act.
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New York City Transit Auth., 462 F.3d 157, 161 (2d Cir. 2006) (quoting Cohen v. Grainger,
Tesoriero, & Bell, 81N.Y.2d655, 658 (1993)).
While the Court is not aware of any precedent directly stating as such, an attorney's right
to their charging lien is not impacted by their successor counsel's failure to achieve attorneys'
fees under a fee-shifting statute. This makes sense in light of both the nature and purpose of the
lien. The "charging lien attaches when an action is commenced," Ross v. Mitsui Fudosan, Inc.,
97-cv-0975 (PKL), 1998 WL 556171, at *2 (S.D.N.Y. Sept. 1, 1998), and "by definition"
attaches "to the proceeds obtained as a result of the action." Sequa Corp. v. GBJ Corp., 156 F.3d
136, 149 (2d Cir. 1998). Accordingly, Hoffman's putative recovery on her lien relates to the
$1.2 million judgment Morel recovered at trial, rather than any fees Willkie Farr is able to
recover under§ 505. See also Burrell v. City of Binghamton, 86-cv-1062, 1989 WL 29878, at *4
(N.D.N.Y. Mar. 24, 1989) ("the attorney's charging lien for the value of the services rendered
attaches to the fund created by the affirmative recovery on the plaintiffs cause of action-that is,
for example, by the damages verdict awarded in a personal injury action or by the verdict
awarded in a breach of contract action or by recovery of money claimed by plaintiff to be due
and owing."); United States v. McCoy, 90-cr-0573 (RWS), 1993 WL 77382, at *2 (S.D.N.Y.
Mar. 11, 1993) ("The charging lien attaches to the fund ultimately recovered as a result of the
attorney's efforts in the litigation.").
Moreover, making an attorney's recovery of their fees contingent on a successor's ability
to triumph on the issue of fee-shifting runs contrary to the purpose of the statute. "The statute is
remedial in character, and hence should be construed liberally in aid of the object sought by the
legislature, which was to furnish security to attorneys by giving them a lien upon the subject of
15
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the action." !tar-Tass, 140 F.3d at 450 (quoting Fischer-Hansen v. Brooklyn Heights R.
Co., 173 N.Y. 492, 495 (1903)).
Assuming the attorney is in fact entitled to their charging lien, the proper method of
fixing the sum of the lien is through a quantum meruit analysis, which requires "ascertaining the
reasonable value of the legal services rendered up to the date of the [party's] substitution of new
counsel." Sequa Corp., 156 F.3d at 148 (citing Lai Ling Cheng v. Modansky Leasing Co., 73
N.Y.2d 454, 457 (1989)). In ascertaining the reasonable value of the legal services rendered, a
number of factors are to be considered, including "the difficulty of the matter, the nature and
extent of the services rendered, the time reasonably expended on those services, the quality of
performance by counsel, the qualifications of counsel, the amount at issue, and the results
obtained (to the extent known)." Id. Moreover, "[a]lthough the court is not bound by the
parties' retainer agreement, such an agreement may guide the court in determining the reasonable
value of the services rendered." Figueroa v. City of New York, 05-cv-9594 (JGK), 2011 WL
5547976, at *3 (S.D.N.Y. Nov. 15, 2011) (citing Stair v. Calhoun, 722 F.Supp.2d 258, 268-69
(E.D.N.Y. 2010)). Nonetheless, any such agreement is "subject to the limitation that, because a
charging lien is an equitable remedy, the amount of the lien must be fair." Id. (citing Sutton, 462
F.3d at 161).
Hoffman proposes calculating the value of her charging lien by reference to the lodestar "the product of a reasonable hourly rate and the reasonable number of hours required by the
case" - which represents a "presumptively reasonable fee." Millea v. Metro-N. R. Co., 658 F.3d
154, 166 (2d Cir. 2011) (citing Arbor Hill Concerned Citizens Neighborhood Assoc. v. Cnty. of
Albany, 522 F.3d 182, 183 (2d Cir. 2008)). The Supreme Court has noted many advantages to
using the lodestar in determining a reasonable attorneys' fee, including the fact that it accounts
16
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for most, if not all, of the relevant factors constituting an appropriate fee. See Perdue v. Kenny
A. ex rel. Winn, 559 U.S. 542, 552-53 (2010). Nonetheless, "[n]o hard-and-fast rule exists by
which it can be determined what is reasonable compensation for an attorney in any given case."
Weg & Myers, P.C. v. 126 Mulberry St. Realty Corp., 453 F. App'x 90, 92 (2d Cir. 2011) (citing
In re .Jakobson, 304 A.D.2d 579, 579 (N.Y. App. Div. 2003)). Ultimately, as with§ 505 claims,
the determination of an appropriate sum for an attorney's charging lien is "committed to the
sound discretion of the trial court." Figueroa, 2011 WL 5547976, at *3 (citing Sequa Corp., 156
F.3d at 149). Moreover, this broad discretion is such that the "court is not required to precisely
spell out how it weighed the various factors making up the fee allowed." Ocean World Lines,
Inc. v. At/ant (USA) Inc., 06-cv-6259 (WHP) (GW), 2008 WL 1776415, at *2 (S.D.N.Y. Apr. 17,
2008) (citing Shrauger v. Shrauger, 146 A.D.2d 955, 956 (N.Y. App. Div. 1989)). With these
considerations in mind, the Court now turns to the substance of Hoffman's claim.
b.
Analysis
At the outset, Hoffman requests that the Court fix the value of her charging lien at
$1,113,283.00. Hoffman derives this hefty sum, nearly equal to the total award received by
Morel at trial, from a lodestar of $831,250.00 plus prejudgment interest and an eighteen percent
upward adjustment due to the complexity of the legal issues involved. Hoffman derives her
lodestar from 1,250 hours ofrepresentation multiplied by an hourly rate of $665.00. See October
3, 2014 Declaration of Barbara Hoffman ("Hoffman Deel.") ~ 72. Morel contends that
Hoffman's proposed fee is unreasonable and that it should be rejected or reduced for five
primary reasons: (1) Hoffman and Morel expressly agreed to a contingency percentage; (2)
Hoffman's proposed reasonable hourly rate is substantially greater than her own quoted hourly
rate; (3) Hoffman refused to cooperate with Morel's request for§ 505 fees and costs, thus
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preventing them from seeking to have AFP and Getty cover her expenses; (4) Hoffman
inadequately recorded her work for Morel; and (5) Hoffman has already received substantial
compensation for work she performed for Mr. Morel. See Dkt. No. 352 at 12. The Court
addresses each of these issues in turn.
i.
Morel and Hoffman's Agreement
When Morel first retained Hoffman as counsel in 2010, they agreed to the following
terms: Hoffman would represent Morel on a contingency fee basis of 25 percent during
negotiation and prior to litigation. See Hoffman Deel., Ex. 5. Hoffman further explained that in
the event of litigation, the contingency fee rate of 33.33 percent would apply. Id. In all
circumstances, Morel was responsible for Hoffman's expenses and for word processing charges
of $40.00 per hour. Id. The letter further reflected that Hoffman's normal hourly rate was
$440.00 per hour, with a discount rate of $395.00 per hour for artists such as Morel. Id.
Although Hoffman and Morel vigorously dispute the significance of the negotiated
contingency fees, their cited authority ultimately stands for the common sense proposition that
their own agreement should inform, but not dictate, the Court's assessment of a reasonable fee.
See, e.g., Sutton, 462 F.3d 161 (citing Ingber v. Sabata, 229 A.D.2d 884, 886 (N.Y. 1996))
(noting that the district court should consider "the terms of the percentage agreement.").
Accordingly, while the Court does not deem Morel and Hoffman's retainer agreement to be
dispositive, it cannot be dismissed as an irrelevant consideration.
ii.
Hoffman's Proposed Hourly Rate
In support of her proposed reasonably hourly rate, Hoffman proffers the declarations of
three experienced New York intellectual property attorneys, each of whom affirm the
reasonableness of a $665.00 per hour rate. See Dkt. Nos. 344-346. Morel challenges this on a
18
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number of grounds. First, a rate of $665.00 per hour is substantially greater than Hoffman's own
quoted rate of $440.00 per hour or $395.00 per hour for artists. Second, Morel argues that
simply soliciting the opinion of three peers, purportedly of comparable skill and experience, fails
to adequately establish a reasonable hourly rate. The Court agrees.
As to the first issue, Hoffman does not adequately address why the Court should so
completely depart from her own quoted hourly rates. While a "reasonable rate" may diverge
from an attorney's quoted hourly rate, the latter at least informs assessment of the former. See
Figueroa, 2011 WL 5547976, at *3. In her reply, Hoffman obliquely responds to this criticism
by contending that her quoted hourly rates in January 2010 are not reflective of her 'current'
rates in 2014. But even this does not adequately address the near 70 percent increase she
proposes for her hourly rate.
Moreover, the Court does not find the rate quoted by Hoffman's three declarants to be
compelling, particularly in light of her own quoted rate. Recent cases within New York City
yield substantially more modest rates for experienced copyright attorneys, including those
working at large firms. For instance, in Lucerne Textiles, Inc. v. H CT Textiles Co., l 2-cv-5456
(KMW) (AJP), 2013 WL 174226, at *6 (S.D.N.Y. Jan. 17, 2013) report and recommendation
adopted, 12-cv-5456 (KMW) (AJP), 2013 WL 1234911 (S.D.N.Y. Mar. 26, 2013) a court in this
District deemed a rate of $475.00 to $495.00 per hour to be reasonable for a law firm partner,
specializing in copyright infringement, who had over twenty-five years of experience. Another
partner with comparable credentials was deemed to have a reasonable rate of $530.00 per hour.
Id. The Court concluded that such rates are "reasonable and commensurate with rates that
attorneys in Manhattan with comparable experience charge and that Southern and Eastern
District judges have approved in other intellectual property cases." Id.
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Other recent cases within the Southern and Eastern District accord with this rate. See,
e.g., Entral Grp. Int'l v. Sun Sports Bar Inc., 05-cv-4836 (CBA), 2007 WL 2891419, at *10
(E.D.N.Y. Sept. 28, 2007) (approving of $560.00 per hour for partner with extensive copyright
infringement experience); TigerCandy Arts, Inc. v. Blairson Corp., 09 Civ. 6215, 2012 WL
760168 at *9 (S.D.N.Y. Feb.23, 2012) ($500.00, not the $800.00 requested, was reasonable
hourly rate for partner who "has been practicing law for twenty-eight years, specializes in
intellectual prope1iy law, and has been recognized as a skilled intellectual property attorney by
several organizations"); Blue Moon Media Grp., Inc. v. Field, 08-cv-1000 (DRH) (AKT), 2011
WL 4056068, at *12 (E.D.N.Y. Apr. 11, 2011) report and recommendation adopted, 08-cv-1000
(DRH) (AKT), 2011 WL 4056088 (E.D.N.Y. Sept. 12, 2011) (approving of a rate of $425.00 to
$450.00 per hour for a partner with 44 years ofIP experience); Pyatt v. Raymond, 10 Civ. 8764,
2012 WL 1668248 at *6 (S.D.N.Y. May 10, 2012) (collecting cases approving $400.00 to
$650.00 hourly rates for partners in copyright and trademark cases); Diplomatic Man, Inc. v.
Brown, 05-cv-9069 (JSR), 2007 WL 2827125, at *2 (S.D.N.Y. Sept. 28, 2007) (approving of a
rate of $440 per hour for a partner with 23 years of IP litigation experience). Accordingly,
Hoffman's proffered rate of $665.00 per hour appears to be materially above what courts in the
New York City region deem reasonable for experienced copyright litigators.
iii.
Hoffman's Failure to Support Morel's§ 505 Motion
Morel requests that, as part of its inquiry into a fair and equitable fee for Hoffman, the
Court take note of the fact that she failed to support Morel's§ 505 motion for fees and costs, thus
precluding Morel from recovering her expense from the Counterclaim Defendants. Hoffman
responds by explaining, first, that Willkie Farr had access to her records, and thus could have
included her expenses as part of its § 505 application and, second, that it was Willkie Farr's
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refusal to set the value of her charging lien that prevented her from participating in the § 505
motion.
The Court need not wade into this gamesmanship between Morel's current and former
counsel. Suffice it to say, the strategic calculations of both Morel's current and former counsel
appear to have taken the issue of fees into account. Accordingly, the Court does not deem
Hoffman's failure to support Morel's § 505 motion to either support or prejudice her own claim.
iv.
Hoffman's Documentation of Her Work for Morel
In explaining her estimate of 1,250 reasonable hours expended in her representation of
Morel, Hoffman states that she has "used [her] best efforts to calculate and reconstruct from [her]
contemporaneous records, the services and reasonable hours [she] provided to Morel during a
given time period. More likely than not, [she] ha[s] underestimated [her] time." Hoffman Deel.
~
36. Morel contends that her records meet neither the standards required by the Copyright Act
and the DMCA, see Scott v. City of New York, 643 F.3d 56, 58 (2d Cir. 2011) (noting that
applications for attorneys' fees should be supported by contemporaneous records), nor the "more
liberal [New York] rule allowing [for] reconstructed records." Marion S. Mishkin Law Office v.
Lopalo, 767 F.3d 144, 147 (2d Cir. 2014). Because Hoffman's charging lien is created under
New York law, the more liberal rule applies. Id. Even so, "if contemporaneous records are not
required, this court cannot rely on an admittedly speculative reconstructed hourly bill to set
compensation." Gen. Star lndem. Co. v. Custom Editions Upholstery Corp., 940 F. Supp. 645,
653 (S.D.N.Y. 1996).
Generously described, Hoffman's records are scattershot. Having reviewed them
extensively, the Court is not able to determine the basis for the number of hours she billed Morel
in 2010, 2011, or 2012. See Hoffman Deel., Ex. 12. The records do not adequately explain the
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nature or duration of the work Hoffman performed on Morel's behalf. While this "is not an
impediment to counsel's obtaining payment for the services she rendered to plaintiff," Cohen v.
New York City Health & Ho:,pitals Corp., 99-cv-3896 (JGK) (KNF), 2001 WL 262764, at *2
(S.D.N.Y. Mar. 16, 2001), it leaves the Court without a reliable basis to substantiate her claimed
1,250 hours oflabor. Instead, the Court must rely on other aspects of the record to determine, in
light of Hoffman's contributions to Morel's suit, an appropriate input for this element of the
lodestar calculation.
v.
Hoffman's Previously Recovered Fees
Finally, Morel contends that any sum fixed to Hoffman's charging lien should be reduced
in light of the fact that she already received significant payout from Morel's settlement with a
number of parties, including ABC, CBS, CNN, and the Washington Post. Although Hoffman
insists that the records she has submitted for this motion do not include billable time related to
these settlements, see Hoffman Deel.
~
66, the Court is skeptical of that assertion due to the
paucity of detail provided by Hoffman. In light of Hoffman's scattershot recordkeeping, it
strains belief to imagine that, years later, she could retroactively suss out what percentage of her
block-billed time was dedicated to settlement negotiations with these parties. Moreover, it is
Hoffman's burden to demonstrate the reasonableness of the proposed value of her charging lien.
See In re Ralph Lauren Womenswear, Inc., 204 B.R. 363, 376 (Bankr. S.D.N.Y. 1997), as
amended (Jan. 21, 1997).
Additionally, even if Hoffman had maintained impeccable records, her work on the
settlements was necessarily interwoven with her work related to AFP and Getty. There would be
no way for the Court to, for instance, determine what portion of her document review related to
settlement efforts as compared to the motion practice against the Counterclaim Defendants. This
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further reinforces the conclusion that Hoffman's prior recovery constitutes a reasonable basis for
reducing her proposed fee.
vi.
Additional Charging Lien Considerations
Having considered Morel's objections to Hoffman's proposed fee, the Court now
conducts its own independent inquiry into what would constitute a reasonable fee, bearing in
mind relevant factors such as "the difficulty of the matter, the nature and extent of the services
rendered, the time reasonably expended on those services, the quality of performance by counsel,
the qualifications of counsel, the amount at issue, and the results obtained (to the extent known)."
Sequa Corp., 156 F.3d at 148.
As to the first consideration, it is fair to characterize this litigation as being relatively
difficult in nature. It involved novel issues in an already sophisticated area of law, namely
intellectual property. There is also no dispute that Hoffman provided extensive and useful pretrial representation to Morel over a number of years. Indeed, Morel acknowledges that
Hoffman's work contributed to the settlements he achieved and the damages he was ultimately
awarded at trial. See Morel Deel.
ii 9.
In addition to assisting Morel with identifying additional
infringements of his copyright, Hoffman also reviewed thousands of documents, produced
documents to opposing counsel, negotiated possible offers of judgment, engaged in mediation
with AFP, drafted Morel's answer and counterclaim, drafted his Rule 26(a) disclosures,
successfully opposed (for the most part) AFP and Getty's motion to dismiss, moved for summary
judgment, and opposed AFP and Getty's summary judgment motion. See Hoffman Deel. ii 34.
By all accounts, Hoffman was competent in her work and achieved a number of significant
victories for Morel. Moreover, Hoffman was a well-suited attorney for this case in light of her
23
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experience and expertise in the area of copyright. Id.
~~
2-5. Her efforts created the groundwork
for a favorable disposition for Morel at trial.
vii.
Calculating a Reasonable Fee
As an initial matter, the Court concludes that granting Hoffman her contractual
contingency fee of 33.33 percent would be inappropriate in light of the fact that it was the effort
and skill of Morel's trial counsel that ultimately ensured such a substantial damages award.
Although Hoffman laid the groundwork for this success, she is not entitled to the windfall that
would result if she was granted her full contingency fee. Such an award would effectively
require Morel to pay two contingency fees for one representation and would not reflect the
reality that, were it not for the timely intervention of his trial counsel, Morel would likely have
obtained a substantially smaller damages sum.
Accordingly, the Court agrees with Hoffman that it is appropriate to use the lodestar
method, but, as already discussed, disagrees as to the appropriate calculation. Applying this
method, the Court believes that fixing Hoffman's charging lien at $164,583.33 is appropriate.
First, the Court concludes that Hoffman should be credited her own proffered hourly rate for
artists: $395.00 per hour. The Court believes this is an appropriate hourly rate for a number of
reasons. First, it is within the well-established range for experienced IP attorneys in the New
York City area. Second, while the Court acknowledges Hoffman's competent work on Morel's
behalf, it believes that that an hourly rate of $395.00 is more reflective of her skill and
contribution to Morel's case than the $665.00 per hour rate she now claims. Third, and perhaps
most importantly, $395.00 per hour is the very rate Hoffman noted to Morel as her fee for aitists.
The Court sees little reason to depart from her own rate in favor of a sum that significantly
exceeds the hourly rate adopted by other comis in this District.
24
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Next, the Court reduces the number of reasonable billable hours Hoffman claims to have
provided to Morel by two-thirds, resulting in a total of 416.66 reasonable hours required by the
case. The Court does not undertake this significant reduction lightly, but does so for a number of
reasons. First, Hoffman's opaque and imprecise billing practices make accurate reconstruction
of her work next to impossible and the Comt does not believe she should be rewarded for this
lack of clarity. Second, Hoffman recovered some level of fees through Morel's settlement with a
number of Defendants. It is not clear whether or not the hours dedicated to these settlements
were disaggregated from the 1,250 number Hoffman provides and even if such disaggregation
were possible, it would not reflect the fact that much of Hoffman's work towards settlement
overlapped with the work required for this aspect of the case. Third, although Hoffman provided
capable service to Morel through motion practice, the Court believes that Morel's ultimate
damages recovery was due in great part to the performance of his trial counsel, and does not
believe that Hoffman is entitled to reap the windfall generated by Morel's present counsel.
Multiplying the reasonable hourly rate of $395.00 per hour by the reasonable number of
hours required for the representation, 416.66, results in a charging lien of $164,580.70. Having
reviewed the parties' submissions and the case docket extensively, as well as the Court's own
first-hand experience with the counsel in this case, the Court concludes that this represents an
appropriate fee for Hoffman.
Finally, as to prejudgment interest, because§ 475 charging liens are equitable in nature,
they do not secure prejudgment interest pursuant to N.Y. C.P.L.R. § 5001 et seq. See Hedman,
Gibson & Costigan, P.C. v. Tri-Tech Sys. lnt'l, Inc., 92-cv-2757 (JFK), 1995 WL 555702, at *4
(S.D.N.Y. Sept. 18, 1995) (concluding that prejudgment interest is not secured under§ 475
because it is an equitable provision within the Court's discretion). Accordingly, the Court
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determines that there is no need to disturb the appropriate fee discussed above through the
addition of prejudgment interest.
c.
Summary
In sum, the Court fixes Hoffman's requested charging lien at $164,580.70. Hoffman
provided quality representation to Morel for a number of years and laid the groundwork for his
ultimate success at trial. Nonetheless, the Court finds her estimated fee to be unreasonable in
light of the foregoing analysis.
III.
CONCLUSION
In conclusion, Morel's request for fees and costs pursuant to 17 U.S.C. § 505 is DENIED.
Hoffman's motion to fix the sum of her charging lien is GRANTED, but in the amended sum of
$164,580.70 with no prejudgment interest. This resolves Dkt. Nos. 326-328, 338, and 341.
SO ORDERED.
March~2015
Dated:
New York, New York
United States District Judge
USDCSDNY
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