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This is a copyright infringement action commenced by Plaintiffs Judi Boisson and her wholly-owned company, American Country Quilts and Linens, Inc. (Collectively “Boisson” or “Plaintiff”) against Defendants Banian, Inc. and its principal, Vijay Rao (collectively “Defendant”). Plaintiff’s action alleges that quilts marketed by Defendant infringed upon Plaintiff’s copyrighted designs.

A. Statutory Damages

17 U.S.C. § 504 (“Section 504”) provides that a copyright infringer shall be liable for either actual damages and profits or statutory damages. 17 U.S.C.§ 504(a). A plaintiff who seeks statutory damages is currently entitled to collect in the range of $750 to $30 000 for each work that is infringed upon. In cases filed before the statutory amendments setting damages in this range, the prior range of $500 to $20 000 is the applicable statutory range.

In addition to the statutory range of damages, Section 504 provides that if a plaintiff proves willful infringement, the court has discretion to increase the statutory award up to $100 000 ($150 000 pursuant to the 1999 Amendments). In Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.2001), the court noted that a defendant’s conduct can be considered willful if the defendant had knowledge that his conduct represented infringement or perhaps recklessly disregarded the possibility.

On the other hand, if it is shown that the infringer was not aware, and had no reason to be aware of the infringement, he can be declared an innocent infringer. An innocent infringer is not absolved of all liability. Instead, the finding of innocence allows the court to exercise its discretion to fashion the proper equitable remedy. In such instances, the court has discretion to reduce the statutory award to $200.

A finding that an infringement is not willful does not necessarily mean that the infringement is innocent and that the infringer is entitled to a reduction in damages. Instead, the court considers a variety of factors when exercising its discretion to determine the proper award, within the statutory range. Such factors include the plaintiff’s lost revenues, defendant’s profits, the value of the copyright and the deterrent effect of the award.

B. Injunctive Relief

The Copyright Act gives the court discretion to grant temporary and permanent injunctions deemed reasonably necessary to prevent future infringements. 17 U.S.C.§ 502(a). Permanent injunctions are appropriate only where infringement has been found and there is a substantial likelihood of future infringements. On the other hand, permanent injunctive relief will not be awarded in cases where there is no history of infringement, the defendant is cooperative in ceasing to sell infringing products and there does not exist any probability of future infringement.

C. Attorney’s Fees

In addition to the remedies above, the court in a copyright action has the discretion to award full costs to the prevailing party. As part of these costs, the court may award a reasonable attorney’s fee.

The standard to apply when deciding whether a party has “prevailed” is the same for plaintiffs and defendants. A party need not be successful on all claims to be deemed the “prevailing party” under the Copyright Act. Instead, a party may be deemed prevailing if it succeeds on a significant issue in litigation that achieves some benefits that the party sought in bringing suit.

Prevailing party status does not require an award of fees. Instead, the court considers the conduct of the non-prevailing party. The factors considered when determining whether an award of fees is appropriate include frivolousness, motivation, objective unreasonableness, and the need to advance considerations of compensation and deterrence. The factor of objective reasonableness is entitled to “substantial weight” when determining whether an award of fees is warranted.

With the above-referenced principals in mind, the court turns to the merits of Plaintiff’s claims for relief.

A. Statutory Damages

Plaintiff here has elected to seek statutory damages. Because this suit was filed in 1997, the range of $500 to $20 000 is the applicable statutory range.

As noted above, the determination of the proper amount of the award requires the court to consider whether the infringement was willful, innocent, or neither. In addition, the court considers the plaintiff’s lost revenues, defendant’s profits, the value of the copyright and the deterrent effect of the award.

1. Wilfulness or Innocence

As noted above, statutory damages can be reduced to $200 in cases where the infringer was unaware, and had no reason to be aware, of the infringement. Defendant contends that the infringement here was completely innocent and a reduction in damages is therefore appropriate.

A finding that an infringement was not willful does not necessarily lead to the conclusion that the infringement was innocent. In light of this standard and the facts developed at trial, the court concludes that the infringement can be deemed neither willful nor innocent. The catalogs in Defendant’s possession make it clear that Defendant had access to Plaintiff’s copyrighted designs. While the possession of these catalogs does not necessarily lead to the conclusion that Defendant knew of, or recklessly disregarded, the possibility of infringement, the court concludes that Defendant had reason to be aware of the infringement. Thus, a finding of innocent infringement is improper here. The court therefore rejects the invitation to increase or decrease the statutory damage award and turns to consider the appropriate award within the statutory range.

In determining the appropriate level of statutory damages, the court looks at a number of factors in addition to willfulness, including the value of the copyright, expenses saved and profits gained by the defendant, lost revenues by the plaintiff, defendant’s cooperation in providing records, and the need to deter the defendant and others from future infringing activity. While this court is required to consider such factors, there is broad discretion in determining the amount of an award....

In light of the foregoing, the court awards to Plaintiff a total of $4 806 in statutory damages.

B. Injunctive Relief

The issue as to the propriety of injunctive relief is whether or not Defendant poses a threat of future infringement. Plaintiff argues that there is a threat of continuing infringement because Defendant has continually created new designs by making modifications to previous designs, specifically pointing to Defendant’s creation of the ABC Navy quilt as a modification of the ABC Green quilts. Defendant correctly points out, however, that such design by modification is commonplace in the quilting industry. Furthermore, even though the ABC Navy quilt was based on a modification of an infringing quilt, the Navy quilt was found to be non-infringing by both the District Court and the Court of Appeals. Thus, it would be improper for the court to base a finding of a substantial likelihood of future infringement on an action which was never declared to be an infringement.

Defendant points out a number of additional factors which the court considers. Specifically, Defendant has no history of copyright infringement, and he immediately ceased selling the designs when advised of the initial lawsuit. Furthermore, Defendant did not resume selling any of the designs even after the District Court entered a finding of non-infringement, and continued to withhold the designs from the market until a final decision from the Court of Appeals. Finally, Defendant has thus far fully complied with the settlement agreement reached with Plaintiff pertaining to the star-design quilts.

All of these factors weigh strongly against finding a substantial likelihood of future infringement, and thus the court is reluctant to award a permanent injunction against defendant. Furthermore, Defendant argues that a permanent injunction would harm his reputation as a quilt dealer, and that harm outweighs any potential benefit gained by the injunction. The court is reluctant to recognize that injunctive relief would have any drastic effects on Defendant’s business as a quilt retailer, especially since Defendant repeatedly stipulated to a permanent injunction in his many settlement offers throughout the course of litigation. In any event, the requisite threat of future infringing activity is lacking completely in this case, and the court therefore declines to award a permanent injunction.

C. Attorney’s Fees

Both parties contend that they have prevailed and should therefore be awarded full attorney’s fees. After identifying the prevailing party, the court will turn to consider the factors necessary to determine whether an fee award is warranted.

The first issue of contention here is whether Plaintiff or Defendant is the prevailing party. Plaintiff initially brought suit claiming a number of infringements. Boisson claimed that defendant’s ABC Green Version I, ABC Green Version II, and ABC Navy quilts each infringed on plaintiff’s School Days I and School Days II quilts. Although Plaintiff also initially claimed infringement on her Pastel Twinkle Star quilts, this matter was settled before litigation on the alphabet quilts.

The ultimate result of this litigation was that only the ABC Green quilts infringed on plaintiff’s School Days I quilt. All other claims were decided in Defendant’s favor. Due to the mixed outcome of the initial claims brought by plaintiff, each party claims that they are the prevailing party within the meaning of 17 U.S.C. § 505. It is clear, however, that Boisson succeeded on a significant aspect of her initial lawsuit, and thus it is appropriate to declare Plaintiff as the prevailing party within the meaning of the Copyright Act.

Neither the actions of Plaintiff nor Defendant can be deemed frivolous. Because there was nothing frivolous about either party’s actions, this factor has no bearing on the decision of whether or not to award attorney’s fees.

Defendant’s motivation throughout the course of litigation was simply to defend his right to produce and sell quilts which he felt he was entitled to sell. In view of the fact that the District Court and Court of Appeals came to different decisions as to the infringement, it is evident that this was not a clear-cut case to decide. Both parties had a good-faith belief in the merits of their cases, and the litigation was simply an effort to assert those beliefs. Furthermore, Plaintiff made settlement demands throughout the litigation for monetary damages in the amount of $175 000, which far exceeds the statutory maximum. Defendant’s refusal to accept this settlement offer was in no way motivated by a bad-faith effort. Thus, this factor alone would not support an award of attorney’s fees to the plaintiff.

4. Objective Unreasonableness

The third discretionary factor which courts consider, and the factor that is entitled to substantial weight, is whether the legal or factual arguments put forth by the losing party were objectively unreasonable. In this case, there is no basis to conclude that Defendant’s actions were objectively unreasonable. It is first worth noting that not only did Defendant’s claim survive attempts at summary judgment at the trial level, but the District Court ultimately decided the case in Defendant’s favor. Though the Court of Appeals ultimately reversed the trial court’s decision in part, Defendant was nonetheless successful on a number of claims. Furthermore, Defendant’s primary argument on appeal was that Plaintiff’s copyrights were invalid because her designs were copied from the public domain. Although the Court of Appeals ultimately concluded that there was not enough evidence to support this claim, there is still no basis to conclude that Defendant’s actions were objectively unreasonable.

5. Deterrence and Compensation

The final factor to consider is the need to advance notions of compensation and deterrence. Given the nature of this case, the court does not conclude that an award of attorney’s fees is necessary to advance considerations of deterrence. As noted earlier, Defendant was entirely cooperative in ceasing any potentially infringing activity upon being served with this lawsuit. Defendant continued to cease selling all quilts involved until the final disposition by the Court of Appeals. Furthermore, Defendant made multiple attempts to settle this matter for a monetary value which was significantly greater than the current award. Given all of these circumstances, the court does not find any need to further notions of deterrence or compensation, and thus declines to award attorney’s fees to the prevailing plaintiff.

For the foregoing reasons, the court awards $4 806 in statutory damages to the Plaintiff. A permanent injunction will not be entered and the court declines to award Plaintiff attorney’s fees. Plaintiff may submit an order reflecting the holdings herein. The Clerk of the Court is directed to terminate the motion.

1. 永久性禁令和临时性禁令有何不同？在授予条件上有何区别？

2. 本案法官在决定是否授予永久性禁令问题上主要考虑了哪些因素？