Nash v. CBS, INC. Case Brief
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Case Brief Summary & Legal Analysis
tl;dr: A court awarded costs to a prevailing defendant in a copyright suit. It held that even if the plaintiff raised a complex issue of copyrightability, the award was justified because the central claim of infringement was not a close question.
Legal Significance: This case clarifies that under 17 U.S.C. § 505, a court’s discretion to award costs hinges on the strength of the core infringement claim, not on the complexity of preliminary issues like copyrightability.
Case Facts & Court Holding
Key Facts & Case Background
The plaintiff, Nash, sued CBS, Inc. for copyright infringement, alleging a television show infringed upon his books. The district court granted summary judgment for CBS, and the Seventh Circuit affirmed. In the underlying litigation, the court had found that Nash’s historical theories, while based on facts, were copyrightable expression. However, it ultimately concluded that CBS’s work was not substantially similar to Nash’s. Following the final judgment, CBS, as the prevailing party, moved to recover $11,813.55 in costs. Nash objected, arguing that an award of costs under the Copyright Act, 17 U.S.C. § 505, was inappropriate. He contended that he had presented a “close question” of law, specifically on the complex and novel issue of the copyrightability of his material, which should preclude an award of costs against him. CBS countered that the central issue in the case was infringement, not copyrightability, and on that point, Nash’s claim was not a close question.
Court Holding & Legal Precedent
Issue: Under 17 U.S.C. § 505, may a court, in its discretion, award costs to a prevailing defendant in a copyright case where the plaintiff raised a close question on the preliminary issue of copyrightability but failed to do so on the central issue of infringement?
Yes. The court awarded costs to the defendant, reasoning that the plaintiff failed to present anything approaching a close question on the dispositive issue of infringement, which was the principal issue in the case, regardless of the complexity of the preliminary copyrightability question.
IRAC Legal Analysis
Legal Issue
Under 17 U.S.C. § 505, may a court, in its discretion, award costs to a prevailing defendant in a copyright case where the plaintiff raised a close question on the preliminary issue of copyrightability but failed to do so on the central issue of infringement?
Conclusion
This decision reinforces that in copyright litigation, the assessment of costs against a losing plaintiff depends on the objective reasonableness of the core infringement claim, not the novelty or complexity of collateral legal issues.
Legal Rule
In a copyright action, 17 U.S.C. § 505 grants a court discretion to award full costs to the prevailing party. This discretion may be exercised to award costs to a prevailing defendant if the plaintiff failed to present a close question of law or fact on the principal issue of the case, such as infringement.
Legal Analysis
The court addressed the plaintiff’s argument that the award of costs under 17 U.S.C. § 505 was discretionary and should be denied because he presented a “close case.” The plaintiff based this assertion on his success in establishing the copyrightability of his work, which he characterized as a complex issue. The court rejected this reasoning, distinguishing between preliminary matters and the ultimate issue of infringement. It acknowledged that copyrightability was a complex threshold question but designated the issue of substantial similarity as the “main issue” in the litigation. Relying on Seventh Circuit precedent concerning attorney’s fees, such as Eisenschiml v. Fawcett Publications, Inc., the court adopted the standard that an award is appropriate where the losing party is unable to raise a close question of fact or law. The court found that on the central issue of infringement, the plaintiff’s case was not close. It noted that this view was implicitly supported by the Court of Appeals’ opinion affirming summary judgment for the defendants. Therefore, even assuming the award of costs was purely discretionary (as opposed to a matter of right for the prevailing party), the weakness of the plaintiff’s core infringement claim justified exercising that discretion in favor of the defendant.
The Opinion
Summary
- Under 17 U.S.C. § 505, a court has discretion to award costs to the prevailing party in a copyright action.
- The court may award costs to a prevailing defendant if the plaintiff failed to present a “close question” on the central issue of infringement.
- A complex preliminary issue (like copyrightability) does not preclude an award of costs if the infringement claim itself is weak.
Full text
Complete unedited opinion text as published by the court
ORDER
This court entered summary judgment in favor of defendants, and the Court of Appeals affirmed. Nash v. CBS, Inc., 899 F.2d 1537 (7th Cir.1990). Pending before the court is defendants’ motion for costs in the amount of $11,813.55. The motion will be allowed.
All of the costs, with the possible exception of $209.67 in miscellaneous charges (Tab 7 to motion), are of the kind usually allowed to prevailing parties as a matter of course pursuant to Rule 54(d), Federal Rules of Civil Procedure, and 28 U.S.C. § 1920. Plaintiff does not object to any of the items as being unnecessary or excessive. Instead, the objection is that the taxation of costs in this case is not authorized by 17 U.S.C. § 505, the statute that explicitly covers fees and costs in copyright cases. It provides:
In 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 as part of the costs. \*330 We have pointed out that a very close question was involved, and we hold that plaintiff should not be assessed attorney fees for trying to protect the copyright on his books. The provision in the judgment requiring plaintiff to pay attorney fees must be eliminated.
\*329 The current version of the statute appears to make an award of either costs or attorney’s fees discretionary with the court. An earlier version provided that “... full costs shall be allowed, and the court may award to the prevailing party a reasonable attorney’s fee as part of the costs.” This was interpreted to make mandatory an award of costs to the prevailing party, while leaving an award of fees in the discretion of the court. Boz Scaggs Music v. KND Corp., 491 F.Supp. 908, 914 (D.Conn.1980). See also Official Aviation Guide Co. v. American Av. Assoc., 162 F.2d 541, 544 (7th Cir.1947).
In light of the fact that prevailing parties in other kinds of civil cases are ordinarily entitled to costs, Popeil Brothers, Inc. v. Schick Electric, Inc., 516 F.2d 772 (7th Cir.1975) (patent case), it is difficult to understand why the matter should be discretionary in copyright cases. However, defendants do not argue that they are entitled to costs pursuant to Rule 54(b) or 28 U.S.C. § 1920. Rather, they argue that the court should exercise its discretion in favor of awarding costs pursuant to 17 U.S.C. § 505 because the question of infringement in this case was not close. Defendants rely on Judge Marshall’s decision in Williams Electronics, Inc. v. Bally Manufacturing Corp., Copy.L.Rep. (CCH) 1125,582 (N.D.Ill.1983), and Eisenschiml v. Fawcett Publications, Inc., 246 F.2d 598 (7th Cir.), cert. denied, 355 U.S. 907, 78 S.Ct. 334, 2 L.Ed.2d 262 (1957).
Both Williams and Eisenschiml involved the question of whether attorney’s fees should be awarded to the prevailing party. In Eisenschiml, the court held an award of fees to have been an abuse of discretion:
\*330 246 F.2d at 604. In Williams, Judge Marshall pointed out that the statute seems to give the court absolute discretion to award reasonable attorney fees to the prevailing party, Copy.L.Rep. ¶ 25,582 at 18,436, but that in any event “where plaintiff is unable to raise even a close question of fact or law, a prevailing defendant may recover its attorney’s fees under § 505,” citing Eisen-sckiml. Id. at 18,437. Judge Marshall awarded fees because plaintiff had failed to make a close case on the question of infringement.
Plaintiff argues that he did make a close case, pointing out that he prevailed on the issue of the copyrightability of his material. The court agrees with defendants that the issue of copyrightability, although complex, was a preliminary issue in this case. The main issue was whether there was infringement — whether the works of the plaintiff and the defendants were substantially similar. This was not a close question.
CONCLUSION
The court has some doubt that the prevailing party in a copyright case can collect its costs only as a matter of the court’s discretion and not as of right. The cases relied on by plaintiff were all concerned with an award of attorney’s fees under § 505, not an award of ordinary costs. Assuming, however, that the matter is discretionary and that it depends upon whether plaintiff presented a close question of law or fact, this court finds that plaintiff failed to present anything approaching a close question on the issue of infringement, which was the principal issue in the case. The court believes that this view is supported by the opinion of the Court of Appeals affirming the summary judgment in favor of defendants. Accordingly, defendants will be awarded their costs in the amount of $11,813.55.