# Premier Dealer Services, Inc. v. Allegiance Administrators, LLC

> District Court, S.D. Ohio · March 28, 2023

URL: https://www.frixlaw.com/law-library/cases/10382075

## Case

- **Court:** District Court, S.D. Ohio
- **Decided:** March 28, 2023
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

## Citator (automated)

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- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/10382075

## How later opinions describe it (automated extraction)

- explaining that district courts have discretion to issue a permanent injunction under the Copyright Act

## Opinion text

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
EASTERN DIVISION

PREMIER DEALER SERVICES,
INC.,
Plaintiff,
Case No. 2:18-cv-735
v. JUDGE EDMUND A. SARGUS, JR.
Magistrate Judge Chelsey M. Vascura

ALLEGIANCE
ADMINISTRATORS, LLC, et al.,

Defendants.

OPINION AND ORDER
This matter is before the Court for consideration of Plaintiff Premier Dealer Services, Inc.’s
Motion for Prejudgment Interest (ECF No. 242), Motion for Permanent Injunction (ECF No. 243),
Motion for Attorneys’ Fees (ECF No. 248), Motion to Compel Expert Fees and for Attorneys’
Fees (ECF No. 257), and Defendant Allegiance Administrators, LLC’s Motion to Stay Briefing on
Premier’s Motion for Expert Deposition Costs (ECF No. 258). For the reasons set forth below, the
Court GRANTS Premier’s Motion for Prejudgment Interest, GRANTS Premier’s Motion for
Permanent Injunction, GRANTS Premier’s Motion for Attorneys’ Fees, GRANTS in part and
DENIES in part Premier’s Motion to Compel Expert Fees and for Attorneys’ Fees, and DENIES
as moot Allegiance’s Motion to Stay Briefing on Premier’s Motion for Expert Deposition Costs.
I. BACKGROUND
The Court set forth the facts giving rise to this case in its Opinion and Order granting
Premier summary judgment on its copyright infringement claim against Allegiance (ECF No. 128),
as well as in its Opinion and Order finding Premier entitled to receive $441,239 in lost profits for
Allegiance’s copyright infringement of Premier’s LPLP Certificates (ECF No. 241). For ease of
reference, the facts set forth in the Court’s August 25, 2022, Opinion and Order are largely restated
below:
A. Facts
Plaintiff Premier Dealer Services, Inc. (“Premier”) and Defendant Allegiance

Administrators, LLC (“Allegiance”) compete as administrators of automobile service contracts
and loyalty programs. Automobile dealerships offer loyalty programs to encourage customers to
return to that dealership for maintenance in exchange for a discounted rate. Allegiance and Premier
administer loyalty programs by enrolling customers and handling customer claims in the programs.
Tricor Automotive Group (“Tricor”), which is not a party to this case, was the obligor in
all service contracts and loyalty programs relevant to this lawsuit. Tricor offers Canadian
automobile dealerships various service contracts and loyalty programs that those dealerships sell
to customers buying new and used vehicles. From 2001 to May 29, 2018, Premier served as
Tricor’s administrator of service contracts and loyalty programs. One program is called the
“Lifetime Powertrain Loyalty Program (LPLP).” To sign up for the LPLP, customers or Premier

representatives completed an administrative form called the LPLP Certificate—which is the
subject of Premier’s copyright infringement claim. Premier has two copyrights registered with the
U.S. Copyrights Office for its LPLP Certificates.
After Premier stopped working with Tricor in 2018, Allegiance began administering
service contracts and loyalty programs for Tricor. Tricor sent Allegiance the Canadian LPLP
Certificates that Premier created for Tricor’s use and represented that the LPLP Certificates were
Tricor’s. Allegiance made minor changes to the LPLP Certificates. The language and appearance
of the documents, however, remained nearly identical to the LPLP Certificates Premier created.
Premier filed suit against Allegiance in the Franklin County Court of Common Pleas on
June 4, 2018, alleging copyright infringement of its LPLP Certificates, misappropriation of trade
secrets, and violations of Ohio tort law. Allegiance removed the case to federal court. On summary
judgment, this Court held Allegiance liable for copyright infringement of Premier’s LPLP

Certificates. (Op. & Order, ECF No. 128.) The Court held a bench trial to determine Premier’s
copyright infringement damages, finding Premier entitled to receive $441,239 in lost profits.
(Minute Entries, ECF Nos. 227, 228; Op. & Order, ECF No. 241.)
B. Subsequent Procedural Background
Shortly after the Court issued its Opinion and Order finding Premier entitled to an award of
lost profits, Premier filed a Motion for Prejudgment Interest and a Motion for Permanent Injunction
(ECF Nos. 242, 243, respectively). Allegiance opposes both motions (ECF Nos. 244, 246,
respectively), to which Premier has replied (ECF Nos. 245, 250, respectively). On September 30,
2022, Premier filed a Motion for Attorneys’ Fees (ECF No. 248), prompting Allegiance’s
opposition (ECF No. 251) followed by Premier’s reply (ECF No. 252.)

On January 20, 2023, Premier filed a Motion to Compel Expert Fees (ECF No. 257), which
Allegiance opposes (ECF No. 263).1 Premier timely replied to Allegiance’s opposition. (ECF No.
265.)
Premier’s motions are fully briefed and ripe for review.

1 Prior to filing its opposition, Allegiance sought an order staying briefing on the issue of expert fees pending resolution
of its appeal before the Sixth Circuit. (ECF No. 258.) On March 10, 2023, the Sixth Circuit dismissed Allegiance’s
appeal, and Allegiance subsequently filed its opposition brief. (ECF No. 263.) Accordingly, Allegiance’s Motion to
Stay Briefing on Premier’s Motion for Expert Deposition Costs is DENIED as moot. (ECF No. 258.)
II. PREMIER’S MOTION FOR PREJUDGMENT INTEREST
Premier asserts that an award of prejudgment interest is appropriate in this matter, and it
requested the same in its Second Amended Complaint. (Premier Mot. Prejud. Interest, ECF No.
242; 2d Am. Compl. at 16, ECF No. 46.)

The leading Sixth Circuit case on prejudgment interest under the Copyright Act is Robert
R. Jones Assocs., Inc. v. Nino Homes, 858 F.2d 274, 282 (6th Cir. 1988). In Robert R. Jones, Judge
Martin, writing for a unanimous panel, stated:
The Copyright Act neither expressly allows nor prohibits awarding prejudgment
interest in copyright infringement cases. As we stated in Bricklayers’, “in the
absence of legislative direction, the Supreme Court directed that the decision to
grant or deny prejudgment interest should hinge on whether to do so would further
the congressional purposes underlying the obligations imposed by the statute in
question.”

Robert R. Jones, 858 F.2d at 282 (citations and alterations omitted). While the Sixth Circuit did
not explicitly identify the “congressional purposes underlying” the Copyright Act, in vacating the
district court’s award of prejudgment interest, the Circuit panel’s decision turned on two
considerations: (1) whether the measure of damages, without accounting for prejudgment interest,
suffices to promote innovation; and (2) whether the measure of damages, without accounting for
prejudgment interest, deters future copyright infringement. Id. (“We believe the measure of
damages applied in this case is clearly sufficient to promote innovation in architectural design and
deter unauthorized exploitation of someone else’s creative expressions.”)
Two other district courts in this Circuit have tackled the issue of prejudgment interest under
the Copyright Act. In Shell v. Lautenschlager, the Northern District of Ohio declined to award
prejudgment interest after finding the plaintiff entitled to statutory damages. 2018 U.S. Dist.
LEXIS 166573, *11-12 (N.D. Ohio Sep. 27, 2018). In rejecting the plaintiff’s request for
prejudgment interest, the court first noted that “[w]hen courts have granted prejudgment interest,
the underlying awards were based, in full or in part, on actual damages and/or profits, not on
statutory damages alone.” Id. at 11 (quoting Broad. Music, Inc. v. Nortel Grill, Inc., 1991 U.S.
Dist. LEXIS 18391, *6 (N.Y.W.D. Aug. 27, 1991)). The court then cited approvingly to Murray
v. Shaw Indus., Inc., 990 F. Supp. 46, 48 (D. Mass. 1997). Id. at 11–12. In Murray, the

Massachusetts District Court declined to award prejudgment interest where the plaintiff did not
suffer any direct economic damages (i.e., lost profits or diminution in the value of plaintiff’s
intellectual property), explaining that “[p]rejudgment interest compensates the plaintiff for the loss
of the use of money that would have been hers but for the wrongful conduct of the defendant.”
Murray, 990 F. Supp. at 48.
The other district court decision from the Sixth Circuit that addresses prejudgment interest
under the Copyright Act is Goldman v. Healthcare Mgmt. Sys., 559 F. Supp. 2d 853 (W.D. Mich.
June 5, 2008). In Goldman, the Western District of Michigan answered the fundamental question
of whether the Copyright Act even permitted a prejudgment interest award. Id. at 863–865. After
acknowledging that a majority of federal circuits have found such awards permissible, coupled

with the Sixth Circuit’s Robert R. Jones decision that “does not clearly and unambiguously state
that prejudgment interest is not allowed,” the court concluded that an award of prejudgment
interest is appropriate in the following circumstance:
In the event that actual damages, profits, costs and attorney fees are insufficient to
provide the sort of deterrent intended by Congress, this Court should be able to
award prejudgment interest.

Goldman, 559 F. Supp. 2d at 865.
Before the Court is such a case. Following the Court’s Order granting summary judgment
in Premier’s favor on its copyright infringement claim, Allegiance continued to exploit Premier’s
certificate:
Q. Now, this product that we’ve been talking about, Tricor has continued to
distribute it and Allegiance has continued to administer it since the Court’s
ruling on July 29th, 2022 -- or ’21, excuse me; right?

A. Correct.

(Murphy Dep. at 67:19-24, ECF No. 191-1.)
In Robert R. Jones, the Sixth Circuit reversed and vacated the district court’s award of
prejudgment interest because the measure of damages was “clearly sufficient to promote
innovation” and “deter unauthorized exploitation of someone else’s creative expressions.” Robert
R. Jones, 858 F.2d at 282. In contrast to Robert R. Jones, the Court’s monetary award here is
clearly insufficient to deter Allegiance from exploiting Premier’s “creative expressions”—namely,
Premier’s LPLP Certificates. Allegiance’s corporate representative’s deposition testimony
demonstrates that, despite the Court finding Allegiance liable for copyright infringement,
Allegiance has continued exploiting Premier’s certificates.
Shell and Murray, both relied heavily upon in Allegiance’s opposition, are materially
distinguishable from the case at bar. The Court, however, recognizes that, just like the plaintiffs in
Shell and Murray, Premier has not provided evidence that it would have received the profits
Allegiance earned from administering Tricor’s program (which uses Premier’s certificate) had
Allegiance not infringed on Premier’s copyright. But this similarity is not decisive. Unlike Shell
and Murray, this case involves a defendant that has continued to exploit the plaintiff’s copyrighted
work even after the court found in favor of the plaintiff’s copyright claim. Thus, guided by the
Copyright Act’s purpose to “deter unauthorized exploitation of someone else’s creative
expression,” see Robert R. Jones, 858 F.2d at 282, coupled with undisputed evidence that the
Court’s damages award based on Premier’s lost profits was “insufficient to provide the sort of
deterrent intended by Congress,” see Goldman, 559 F. Supp. 2d at 865, the Court therefore finds
Premier entitled to prejudgment interest. Accordingly, the Court GRANTS Premier’s Motion for
Prejudgment Interest. (ECF No. 242.)
III. PREMIER’S MOTION FOR PERMANENT INJUNCTION
Premier seeks a permanent injunction pursuant to 17 U.S.C. § 502. (Pl. Mot. Perm. Inj. at

3, ECF No. 243; see also 2d Am. Compl. at 16, ECF No. 46.) The Court has found that Allegiance
infringed Premier’s copyrights, thus the Court will consider whether a permanent injunction, in
addition to the damages already awarded, is appropriate. See Bridgeport Music, Inc. v. Justin
Combs Publ’g, 507 F.3d 470, 492 (6th Cir. 2007) (noting that the Copyright Act authorizes
injunctive relief as a remedy for infringement); Columbia Pictures Indus. v. T & F Enterprises, 68
F. Supp. 2d 833, 841 (M.D. Mich. Oct. 25, 1999) (explaining that district courts have discretion to
issue a permanent injunction under the Copyright Act).
A. Legal Standard
As stated by the Sixth Circuit, “[i]t is uncontroversial that a ‘showing of past infringement
and a substantial likelihood of future infringement’ justifies issuance of a permanent injunction.”

Bridgeport, 507 F.3d at 492 (quoting MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON
COPYRIGHT § 14.06[B] (2007)). Indeed, not only is a permanent injunction justified under such a
scenario, but “[w]hen a copyright plaintiff has established a threat of continuing infringement, he
is entitled to an injunction.” Id. (quoting Walt Disney Co. v. Powell, 897 F.2d 565, 567 (D.C. Cir.
1990)). To assess the substantial likelihood of future copyright infringement, courts in this Circuit
consider “the magnitude of the infringement, whether the infringer maintains possession of the
infringing product, and whether the infringer can or has continued its infringing conduct even after
the initiation of court proceedings.” Calibrated Success, Inc. v. Charters, 72 F. Supp. 3d 763, 773
(E.D. Mich. Dec. 15, 2014).
But the analysis does not end with a finding of a substantial likelihood of continuing
infringement. The Supreme Court has indicated that a district court must analyze the four factors
traditionally examined when issuing permanent injunctions in patent and copyright infringement
cases. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 392–93 (2006). Thus, a plaintiff seeking

a permanent injunction must demonstrate:
(1) that it has suffered an irreparable injury;
(2) that remedies available at law, such as monetary damages, are inadequate to
compensate for that injury;
(3) that, considering the balance of hardships between the plaintiff and defendant,
a remedy in equity is warranted; and
(4) that the public interest would not be disserved by a permanent injunction.

Id. at 391 (2006); see also Microsoft Corp. v. McGee, 490 F. Supp. 2d 874, 882 (S.D. Ohio May
18, 2007).
B. Discussion
The Court begins by assessing the likelihood that Allegiance will continue infringing on
Premier’s copyright in the future. Premier has established that Allegiance “has continued its
infringing conduct even after the initiation of court proceedings.” See Calibrated Success, 72 F.
Supp. 3d at 773. Following the Court’s Order on summary judgment, Allegiance has continued to
exploit the infringing use of Premier’s certificate. (See Murphy Dep. at 67:19-24, ECF No. 191-1
(confirming that Allegiance has continued administering the copyrighted certificates after July 29,
2021).) Further, Allegiance’s opposition brief suggests that, absent a permanent injunction, it will
continue exploiting Premier’s copyright. (See Opp’n Perm. Inj. at 7, ECF No. 246 (arguing that
permitting Allegiance to continue administering the copyrighted program is necessary to ensure
that registered consumers receive the benefits of the loyalty program).) The Court therefore finds
that a substantial likelihood of future infringement exists.
Turning to the eBay factors, the Court will analyze the first two factors together: whether
Allegiance’s infringement of Premier’s copyright was an irreparable injury and whether monetary
damages are sufficient. Through Allegiance’s infringement of Premier’s certificate, Premier has
lost the right to exclusive control of its copyright. “[T]hat Section 106 of the Copyright Act does

not grant a copyright owner the exclusive right to ‘use’ a work is sophistry.” Stromback v. New
Line Cinema, 384 F.3d 283, 301 (6th Cir. 2004) (citing Alcatel USA, Inc. v. DGI Techs., Inc., 166
F.3d 772, 787 (5th Cir. 1999)). Although Premier has received damages to compensate it for the
copying and past use, its future right to exclusive use cannot be restored without an injunction.
Allegiance argues that Premier did not suffer an irreparable injury and that adequate
remedies are available at law. Beginning with Allegiance’s argument that Premier did not suffer
an irreparable injury at its hands, which requires Premier to show that Allegiance is likely to
infringe Premier’s copyrights in the future, see Shell, 2018 U.S. Dist. LEXIS 166573, at *18–19,
Allegiance asserts that “Allegiance’s copying of the Certificate occurred and ended four years
ago.” (Opp’n Perm. Inj. at 5, ECF No. 246.) Now, because Allegiance only serves as an

administrator for Tricor’s programs, “Premier has not shown any threat of future infringement by
Allegiance.” (Id.) The Court disagrees. Allegiance’s unlawful conduct was not simply the copying
of Premier’s certificate, but also the use of the certificate. When the Court ordered the
disgorgement of Allegiance’s profits, the Court defined these profits as “the amount of profit
Allegiance earned from using the LPLP Certificate.” (ECF No. 241 at 3 (emphasis added).) Despite
the Court finding Premier entitled to $441,239 based on Allegiance’s use of Premier’s certificate,
Allegiance has continued to use the certificate in the same manner as before: as the administrator
of Tricor’s loyalty programs. The Copyright Act gives Premier the exclusive right to use its
copyright, but such right is meaningless so long as Allegiance adheres to its current practices. The
Court thus finds that Allegiance’s post-judgment use of Premier’s certificate shows irreparable
injury.
As to the second factor, Allegiance argues that the Court’s award of $441,239 establishes
that Premier has an adequate remedy at law, which precludes a permanent injunction. (Opp’n

Perm. Inj. at 6, ECF No. 246.) The Court is not persuaded. The Sixth Circuit has explained that
where there is potential for future harm from infringement, there is no adequate remedy at law.
Audi AG v. D’Amato, 469 F.3d 534, 550 (6th Cir. 2006). As discussed above, there is potential for
future harm from infringement because Allegiance has continued its infringing activities even after
the Court granted summary judgment in favor of Premier on its copyright infringement claim.
Moving to the balance of hardships, the Court finds a permanent injunction is warranted
because there is no harm to Allegiance inasmuch as an injunction will merely require Allegiance
to comply with the Copyright Act. McGee, 490 F. Supp. 2d at 883; see also HarperCollins Publrs.
LLC v. Open Rd. Integrated Media, LLP, 58 F. Supp. 3d 380, 387 (S.D.N.Y. 2014) (“[I]t is
axiomatic that an infringer of copyright cannot complain about the loss of ability to offer its

infringing product.”) (quoting WPIX, Inc. v. ivi, Inc., 691 F.3d 275, 287 (2nd Cir. 2012)). In
contrast, Premier faces the specter of having to bring a lawsuit for every future infringement. See
Buttnugget Publ’g v. Radio Lake Placid, Inc., 807 F. Supp. 2d 100, 109 (N.D.N.Y Aug. 5, 2011)
(“Requiring plaintiffs to commence litigation for each future violation would be an extreme
hardship, while preventing defendants from continually infringing on plaintiffs’ copyrighted
material is not.”).
Finally, it is in the public’s interest to issue a permanent injunction. “Since Congress has
elected to grant certain exclusive rights to the owner of a copyright in a protected work, it is
virtually axiomatic that the public interest can only be served by upholding copyright protections
and, correspondingly, preventing the misappropriation of the skills, creative energies, and
resources which are invested in the protected work.” McGee, 490 F. Supp. 2d at 883 (quoting
Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1255 (3rd Cir. 1983)).
Allegiance, however, argues that this factor weighs in its favor. Specifically, Allegiance takes the

position that a permanent injunction would harm consumers because it would prevent Allegiance
“from serving its role of ensuring that the consumers who sign up for the loyalty programs receive
the benefit of their bargains with Tricor.” (Opp’n Perm. Inj. at 7, ECF No. 246.) But this argument
mischaracterizes the extent of the proposed permanent injunction. Premier does not seek an order
barring Allegiance from administering the certificates already issued; rather, Premier is asking the
Court to enjoin Allegiance from administering any certificate or derivative of Premier’s
copyrighted work issued after the date of the Court’s order. (See Proposed Order, ECF No. 243–
1.) Thus, the final eBay factor also weighs in Premier’s favor.
In sum, the Court finds that Premier is entitled to a permanent injunction; Premier’s Motion
for Permanent Injunction is GRANTED. (ECF No. 243.)

IV. ATTORNEYS’ FEES AND COSTS
Premier also seeks an award of reasonable attorneys’ fees and costs. (ECF No. 248.) As
discussed below, the Court finds that an award of reasonable attorneys’ fees, but not costs, is
appropriate in this case.
A. Legal Standard
The Copyright Act provides for awards of attorneys’ fees and costs:
In any civil action under this title, the court in its discretion may allow the recovery
of full costs by or against any party . . . . [T]he court may also award a reasonable
attorney’s fee to the prevailing party as part of the costs.
17 U.S.C. § 505. Although an award of attorneys’ fees and costs is not automatic, “[t]he grant of
fees and costs ‘is the rule rather than the exception and they should be awarded routinely.’” Miller
v. Hurst, 2022 U.S. App. LEXIS 2494, *9 (6th Cir. 2022) (quoting Balsley v. LFP, Inc., 691 F.3d
747, 773 (6th Cir. 2012). While “[t]here is no precise rule or formula” for determining whether an

award of attorneys’ fees and costs is proper, the Supreme Court has identified “several
nonexclusive factors” that courts may consider so long as they do so “in an evenhanded manner .
. . consistent with the primary purposes of the Copyright Act”: “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.”
Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 807–808 (6th Cir. 2005) (quoting
Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). Because the list of factors is
nonexclusive, “not every factor must weigh in favor of the prevailing party and other factors may
be considered as well.” Bridgeport Music, Inc. v. Diamond Time, Ltd., 371 F.3d 883, 894 (6th Cir.
2004).

B. Attorneys’ Fees
Premier argues that it is entitled to attorneys’ fees because: (1) Allegiance’s behavior
throughout this litigation substantially—and unnecessarily—increased costs, (2) Allegiance
asserted factually and legally unreasonable positions, and (3) an award of attorneys’ fees is
necessary to deter Allegiance from continuing to exploit Premier’s copyrights.
Allegiance responds that Premier is not entitled to attorneys’ fees because: (1) Allegiance
did not willfully infringe Premier’s copyright, (2) Allegiance did not take unreasonable
factual/legal positions in the litigation, and (3) because Allegiance has appealed the Court’s
summary judgment and damages opinions, it is premature to award attorneys’ fees.2
a. Fogerty factor: objective unreasonableness
Several of Premier’s arguments justifying an award of attorneys’ fees fall under the

“objective unreasonableness” Fogerty factor. Premier asserts that Allegiance’s decision to advance
legally and factually “delusion[al]” positions warrant an award of attorneys’ fees. (ECF No. 248
at 3.) First, Premier argues that Allegiance’s corporate representative took a factually disingenuous
position when testifying at the damages hearing. Specifically, Premier takes issue with
Allegiance’s corporate representative’s insistence that the forms at issue belonged to Allegiance,
even after the Court’s summary judgment decision. The Court, however, has reviewed the
transcripts from the hearing, and Allegiance’s corporate representative, Dawn Murphy, simply
took the position that the infringing forms were “Tricor-owned” or a “Tricor derivative.” (ECF
No. 256 at 291:16-25, 293:15-20.) The Court does not find Ms. Murphy’s position to be so
factually unreasonable as to warrant attorneys’ fees.

Second, Premier argues that Allegiance assumed a legally unreasonable position when it
ignored Sixth Circuit precedent concerning the infringer’s burden in the context of disgorgement
of profits. The Court agrees. In Balsley, the Sixth Circuit articulated the burden of proof on each

2 In arguing that an attorneys’ fee award is premature at this juncture, Allegiance cites to McCaughey v. City of Blue
Ash, 2009 U.S. Dist. LEXIS 116546 (S.D. Ohio Nov. 25, 2009). There, after finding a stay appropriate under Fed. R.
Civ. P. 62(d), which allows an appellant to obtain a stay upon the posting of a bond or by demonstrating that the
appellant has the capacity to pay the judgment, the court reserved judgment on plaintiff’s motion for attorneys’ fees
pending appeal. McCaughey, 2009 U.S. Dist. LEXIS 116546, at *3–6. The Court found a stay appropriate because,
despite defendant’s failure to file a supersedeas bond, the defendant provided evidence that it had sufficient assets to
pay the judgment through its risk pool and its excess carrier, in addition to having already set the funds aside should
plaintiff prevail on appeal. Id. at 4–5. This case has little in common with the present case. While both Allegiance and
the defendant in McCaughey failed to file a bond, that is where the similarities end. Allegiance, unlike the McCaughey
defendant, has failed to provide the Court with any evidence suggesting it deserves relief from Rule 62’s bond
requirement. Thus, the Court does not find it premature to award Premier its reasonable attorneys’ fees.
party in proving profits, explaining that the copyright owner need only show that the infringer’s
gross revenue has a “reasonable relationship to the infringing activity.” 691 F.3d at 769.
Allegiance, however, asserted that a causal link was required—a position rejected in Balsley. Id.
at 769 n.6 (“We emphasize that we do not impose the more stringent burden of proving a “causal

connection” on copyright owners . . . .”). For example, Allegiance devoted over eight pages of its
15-page Post-Trial Brief in arguing that Premier failed to establish a “causal link” between
Allegiance’s profits and the “infringing language.” (ECF No. 231 at 3–11.) Allegiance did this
even after acknowledging that “Premier has the burden to prove any of Defendants’ gross revenues
that have a reasonable relationship to infringement of the LPLP Certificate . . . .” (Id. at 3 (citing
Balsley, 691 F.3d at 796–70).) As stated in the Court’s Order following the damages hearing,
Allegiance’s position was “inconsistent with Sixth Circuit law.” (ECF No. 241 at 5.) Thus, the
Court finds that Allegiance’s disregard of Sixth Circuit precedent weighs in favor of awarding
Premier its attorneys’ fees.
Premier also criticizes Allegiance’s good faith, or lack thereof, during negotiation

proceedings in this matter. (ECF No. 248 at 3.) Specifically, Premier claims that Allegiance failed
to negotiate in good faith following the Court’s decision on summary judgment because Allegiance
believed it had the right to contest Premier’s authorship of the certificate. Given this unfounded
belief, Allegiance unsuccessfully contested the Court’s decision—twice—prompting the Court to
state the following when denying Allegiance’s motion for sanctions:
The Court notes that this is the second time Defendants have challenged the Court’s
summary judgment ruling at a late hour. First, Defendants filed their motion for
reconsideration six months after the Court’s summary judgment ruling. Second,
Defendants moved for sanctions on April 20, 2022 despite knowing as early as
February 2022 of Plaintiff’s allegedly sanctionable conduct.
(May 13, 2022, Order at 3, ECF No. 204.) According to Premier, Allegiance’s refusal to accept
the Court’s summary judgment ruling inhibited Allegiance’s ability to negotiate this matter in good
faith. And in a similar vein, Premier asserts that Allegiance made trial necessary by offering only
a third of its own calculation of profit attributed to its infringement of Premier’s copyrighted work.

In response, Allegiance argues, without providing evidence, that Premier’s contention
concerning Allegiance’s lack of good faith during negotiations “is provably false.” (ECF No. 251
at 4.) Allegiance also disputes Premier’s characterization of Allegiance’s motion for sanctions as
another request to reconsider the Court’s summary judgment decision, arguing that Premier’s
position “is untrue as a matter of record.” The Court disagrees. As a matter of record, Allegiance’s
motion for sanctions was “the second time Defendants have challenged the Court’s summary
judgment ruling at a late hour.” (May 13, 2022, Order at 3, ECF No. 204.) The Court declines to
decide whether or not Allegiance acted in good faith during the negotiations leading up to the
damages hearing; however, the Court finds that Allegiance’s “late hour” motions seeking
reconsideration of the Court’s summary judgment decision, coupled with Allegiance’s blatant

denial that its motion for sanctions sought to vacate the summary judgment ruling, was objectively
unreasonable, leaving the Court inclined to issue Premier an award of attorneys’ fees.
b. Fogerty factor: deterrence
The Copyright Act is intended to “encourage the production of original literary, artistic,
and musical expression for the good of the public.” Fogerty, 510 U.S. at 524. “Attorney’s fees may
be awarded for reasons other than simply making the plaintiff whole, such as encouraging the
assertion of colorable copyright claims and deterring infringement.” Chi-Boy Music v. Charlie
Club, Inc., 930 F.2d 1224, 1230 (7th Cir. 1991); see also Superhype Publ’g, Inc. v. Vasiliou, 838
F. Supp. 1220, 1227 (S.D. Ohio 1993) (“Attorney’s fees may be awarded in infringement actions
to make the party whole, but also, to encourage assertion of colorable copyright claims and to deter
infringement.”).
Here, the Court finds that attorneys’ fees are appropriate in order to deter Allegiance from
profiting further from its use of Premier’s copyrighted work. Despite Allegiance’s insistence that

it was an innocent infringer, see ECF No. 251 at 2–4, the undisputed facts establish that Allegiance
has continued profiting from Premier’s copyrighted work. See discussion supra Sections II, III.B.
By awarding Premier attorneys’ fees, this Court promotes the Copyright Act’s purpose to “deter
unauthorized exploitation of someone else’s creative expressions.” Robert R. Jones, 858 F.2d at
282.
In sum, primarily for reasons of deterrence, and secondarily for Allegiance’s occasionally
objectively unreasonable litigation positions, the Court finds some award of attorneys’ fees
appropriate in this case.
c. Reasonableness
While Premier is entitled to attorneys’ fees, it is not automatically entitled to its actual

attorneys’ fees under the Copyright Act; rather, Premier is entitled to “a reasonable attorney’s fee.”
17 U.S.C. § 505.
The Court uses the “lodestar” method to determine the reasonableness of requests for
attorneys’ fees. Music v. Fargo, 2008 U.S. Dist. LEXIS 141635, *14 (S.D. Ohio Jan. 18, 2008);
see also Diamond Time, 371 F.3d at 896 (approving of district court’s application of lodestar
method to attorneys’ fees award in copyright case). Under this method, the Court determines the
lodestar amount by multiplying the “hours reasonably expended on the litigation . . . by a
reasonable hourly rate.” Hensley v. Eckerhart, 461 U.S. 424, 433 (1983). “After calculating this
amount, the court should consider the factors mentioned in Fogerty and review the documentation
relating to hours expended and the prevailing market rate for the work.” Ametex Fabrics v. Custom
Interiors & Supply Co., 1998 U.S. App. LEXIS 20538, *8 (6th Cir. 1988). The court then considers
whether any adjustments to the lodestar are appropriate. Hensley, 461 U.S. at 434–36.
i. Lodestar amount

In order to calculate the lodestar amount, the Court will begin by determining the
reasonableness of Premier’s requested hourly rate. After making this determination, the Court will
then calculate the appropriate number of hours worked.
1. Hourly rate
Premier’s counsel requests the following hourly rates: $475 for its Columbus partner, $350
for its Kentucky partner, and $250-$295 for associates. (ECF No. 248 at 6.) Allegiance does not
challenge the reasonableness of these rates.
In order to determine whether Premier’s requested hourly rates are reasonable, the Court
looks to the prevailing market rate. Northcross v. Bd. of Educ., 611 F.2d 624, 638 (6th Cir. 1979).
The Sixth Circuit defines “prevailing market rate” as the rate that “lawyers of comparable skill and

experience can reasonably expect to command within the venue of the court of record.” Geier v.
Sundquist, 372 F.3d 784, 791 (6th Cir. 2004). “A district court is permitted to ‘rely on a party’s
submissions, awards in an analogous case, state bar association guidelines, and its own knowledge
and experience in handling similar fee requests.’” Waldo v. Consumers Energy Co., 726 F.3d 802,
821–22 (6th Cir. 2013) (quoting Van Horn v. Nationwide Prop. & Cas. Ins. Co., 436 F. App’x
496, 499 (6th Cir 2011)). Premier carries the burden to produce sufficient evidence that its
requested hourly rates are congruent with those prevailing in the community for similar services.
See Blum v. Stenson, 465 U.S. 886, 896 n.11 (1984).
Here, Premier’s counsel contends that their rates are reasonable and consistent with the
prevailing rates in the community for attorneys with similar qualifications and experience. (ECF
No. 248 at 6; Thomas Decl. ¶ 5, ECF No. 248-1; Krabacher Decl. ¶ 5, ECF No. 248-2.) In carrying
their burden, Premier’s counsel cite to a number of cases from the Southern District awarding

attorneys’ fees at rates comparable to the requested rate. (ECF No. 248 at 6 n.2.)
The Court finds Premier’s requested rates largely reasonable, as it is familiar with the
hourly rates charged by lawyers in Columbus, Ohio and the high quality of work and skillful
litigation performed by Premier’s counsel. Moreover, the requested hourly rates fall within ranges
previously deemed reasonable in this market. In Liang v. AWG Remarketing, Inc., a case involving
a copyright dispute over an automobile auction website, the Honorable Judge Frost approved
partner hourly rates ranging from $320-$550 and associate hourly rates from $240-$295. 2016
U.S. Dist. LEXIS 13566, *37 (S.D. Ohio Feb. 4, 2016).
The Court will, however, reduce the hourly rates to properly reflect Premier’s counsel’s
billing rates over the course of this multi-year litigation. A review of Mr. Krabacher’s invoices

demonstrates that in 2018, his hourly rate was $405, which increased to $430 in 2019, $450 in
2020, and then $465 in 2021 and 2022. (Krabacher Decl., ECF No. 248-2.) Associate billing rates
similarly increased: in 2018, rates ranged from $200 to $235, increasing to $210-$265 in 2019,
and then $225-$295 for the period between 2020 and 2022. (Id.) Thus, rather than issuing an
attorneys’ fees award based on Premier’s counsel’s more recently charged hourly rates, the Court
will instead reduce the hourly rates, where appropriate, to match the rates that Premier’s counsel
actually charged—and Premier actually paid.
2. Number of hours
The party seeking attorneys’ fees has the burden of “documenting the appropriate hours
expended and hourly rates.” Hensley, 461 U.S. at 437. The party must submit evidence that enables
the court to determine that such hours and hourly rates “were actually and reasonably expended”

in the litigation. United Slate, Tile & Composition Roofers, Damp & Waterproof Workers Ass’n,
Local 307 v. G & M Roofing & Sheet Metal Co., 732 F.2d 495, 502 n.2 (6th Cir. 1984). “Where
the documentation is inadequate, the court may reduce the award accordingly.” Brown v. Halsted
Fin. Servs., LLC, No. 3:12-CV-308, 2013 U.S. Dist. LEXIS 26144, *7 (S.D. Ohio Feb. 26, 2013).
In this case, Premier’s counsel has provided invoices from their respective firms reflecting
the work performed relating to the copyright infringement issues in this case. (ECF Nos. 248-1,
248-2.) Allegiance takes issue with these invoices, arguing that they make it impossible “to fully
discern what portions of the overall entries were attributable to the Copyright claim.” (ECF No.
251 at 9.) First, both declarations provide that the invoices relate specifically to the copyright
infringement issues. (Thomas Decl. ¶ 2, ECF No. 248-1; Krabacher Decl. ¶ 2, ECF No. 248-2.)

Second, the Court finds that the invoice entries are sufficiently detailed and of probative value that
the Court has a high degree of certainty that the hours were actually and reasonably expended.
Tellingly, Allegiance’s opposition does not challenge any particular billing entry as documenting
time unreasonably expended.
Allegiance does, however, make a general allegation that Premier’s decision on the eve of
trial to forego statutory damages, which was the only issue creating a question for the jury, resulted
in a “huge increase in the cost of trial that . . . could have been avoided . . . .” (ECF No. 251 at 5.)
The Court finds that Premier’s decision does not warrant a reduction in the amount of hours
Premier’s counsel reasonably expended. Although Premier’s decision undoubtedly increased
hours before trial, the decision almost certainly reduced the hours necessary for trial. While
statutory damages were still in play, Allegiance had predicted a six-day trial defended by two
lawyers; instead, they had one lawyer defend a two-day hearing. (Final Pretrial Order at 1-2, ECF
No. 209.) Given the cost savings associated with the shortened hearing, the Court does not find it

appropriate to subtract any hours from those Premier’s counsel reasonably billed.
Turning to the invoices, the Court’s independent review establishes that Premier was billed
for approximately 1,794 hours of legal work related to the copyright infringement issues. (See
Thomas Decl., ECF No. 248-1 (totaling approximately 1,034 hours); Krabacher Decl., ECF No.
248-2 (totaling approximately 760 hours).) Of these hours, roughly 1,552 hours were charged by
partners and the remaining 242 belonged to associates. (Id.) Mr. Krabacher charged the following:
33.5 hours at rate of $405 in 2018, 13.25 hours at a rate of $430 in 2019, 4.75 hours at a rate of
$450 in 2020, and 563.7 hours at a rate of $465 for 2021 and 2022. (Krabacher Decl., ECF No.
248-2.) Ms. McCurdy, a partner at Mr. Krabacher’s current firm, billed 34.9 hours at a rate of $425
in 2022. (Id.) And Mr. Campbell, a partner at Mr. Krabacher’s former law firm, billed .25 hours at

a rate of $475 in 2020. As for Mr. Thomas’s invoices, which do not clearly articulate his billing
rate, the Court will apply the reasonable hourly rate of $350 to his 902.5 hours billed. (See Thomas
Decl., ECF No. 248-1.) With these numbers in mind, the Court calculates the attorneys’ fees arising
from partner hours to be $614,349.25.
As for the associates, A. Grandjean billed 9.25 hours at an hourly rate of $235; S. Lehman
billed 7 hours at a rate of $225 in 2018, 14.25 hours at a rate of $265 in 2019, 4 hours at a rate of
$285 in 2020, and 17.5 hours at a rate of $295 in 2021; C. Miller billed 3 hours at a rate of $200
in 2018, 1 hour at a rate of $210 in 2019, and 10.5 hours at a rate of $230 thereafter; B. Mangiarelli
billed 1.5 hours at a rate of $225; A. Parriman billed 3.75 hours at a rate of $265 in 2020 and 1
hour at a rate of $270 in 2021; C. Gordon billed 18.05 hours at a rate of $290 in 2021; G.M. Balian
billed 1.4 hours at a rate of $275 in 2022; A. Baker Jones billed 13.9 hours at a rate of $225 in
2022; and C.T. Page McGinnis billed 3.2 hours at a rate of $260 in 2022. (Krabacher Decl., ECF
No. 248-2.) The invoices for the associates at Mr. Thomas’s firm do not identify their hourly rates.

As such, the Court will apply an hourly rate of $240. See Liang, U.S. Dist. LEXIS 13566, *37
(finding an associate hourly rate of $240 appropriate in a copyright infringement action). The
associates at Mr. Thomas’s firm billed 131.45 hours. Thus, the attorneys’ fees based on associate
hours totals $59,780.75.
Next, the Court adds the partner fees and the associate fees together, which comes to a
grand total of $674,130.00. This does not end the Court’s analysis, however. Mr. Thomas’s firm
extended multiple credits to Premier throughout this litigation, and the Court will subtract these
credits from the total fees. In reviewing the invoices from Mr. Thomas’s firm, which does not
itemize these credits, the Court finds that $32,201 of the $52,167.25 credits extended relate to the
copyright portion of this case.3 (See Thomas Decl., ECF No. 248-1.) Thus, the Court calculates

Premier’s attorneys’ fees for the copyright issues to be $641,929.00.
ii. Adjustment to lodestar
The product of reasonable hours multiplied by a reasonable rate “does not end the inquiry.”
Liang, 2016 U.S. Dist. LEXIS 13566 at *41; see also Market Day Corp. v. Maas, No. 1:05-cv-
578, 2006 U.S. Dist. LEXIS 33375, at *10 (S.D. Ohio May 25, 2006) (noting that the lodestar
amount may be adjusted for considerations including the results obtained, novelty and difficulty
of questions presented, and the skill needed). Premier does not suggest reasons for the Court to
adjust the lodestar amount.

3 This reflects a 50% reduction to the credits extended prior to the Court’s summary judgment decision, which
accounts for credits extended for work unrelated to the copyright portion of this case.
In contrast to Premier, Allegiance argues that Premier’s counsel’s practice of “block
billing” warrants a reduction to the lodestar amount. (ECF No. 251 at 9-10.) The Court disagrees.
Caselaw from this District unequivocally permits “block billing”—i.e., attorney time entries that
describe the completion of more than one task. See Armstrong v. Receivables Perf. Mgmt., LLC,

2012 U.S. Dist. LEXIS 15564, *9 (S.D. Ohio, Feb. 8, 2012) (holding that “block-billed entries are
not improper in the attorney fee context”); Williamson v. Recovery Ltd. P’ship, 2013 U.S. Dist.
LEXIS 88962, *29–30 (S.D. Ohio June 25, 2013) (collecting cases and holding that “the use of
block billing in and of itself is not improper in the attorney fee context”). The Court has reviewed
the invoices, which have been adjusted to account only for the copyright issues, and Premier’s
counsel’s declarations. The Court finds that it is able to ascertain the compensable work within the
block billing.
But a reduction to the lodestar amount is warranted. In reviewing Premier’s counsel’s
invoices, the Court observed that partners billed the overwhelming majority of time in this case.
Of the total 1,794 hours billed, partners combined for 1,552 of those hours, or approximately

86.5% of the total number of hours. Associates, in contrast, billed a total of just 242 hours, or
approximately 13.5% of the total number of hours. The Sixth Circuit has recognized that this type
of “top-heavy” billing calls for an across-the-board reduction to the lodestar amount. See, e.g.,
Bridgeport Music, Inc. v. WB Music Corp., 520 F.3d 588, 596 (6th Cir. 2008) (affirming the district
court’s decision to reduce the lodestar amount by 25% “to account for top-heavy billing by partners
for work that could have been performed by associates”). So, too, has the Southern District of
Ohio. See Liang, 2016 U.S. Dist. LEXIS 13566 at *39 (reducing fee award by 10% in copyright
case where partners billed 82% of the total number of hours billed). This case necessitated
substantial hours for legal research, discovery, reviewing documents, and drafting briefs—tasks
that associates undoubtedly could have performed to an extent greater than what the invoices
evidence. Accordingly, the Court reduces the fee award by 10% to account for the top-heavy
billing reflected in the invoices. See id. at *40.
In sum, after factoring in the 10% reduction due to the imbalanced billing, the Court

calculates the lodestar in this case to be $577,736.10 in attorneys’ fees.
C. Costs
Finally, the Court addresses Premier’s request for reimbursement of its litigation costs. The
Copyright Act permits the Court to “allow the recovery of full costs by or against any party.” 17
U.S.C. § 505.
Premier seeks an award of costs in the amount of $7,280.89. (ECF No. 248 at 8.) These
costs allegedly relate to the expenses Premier incurred in connection with depositions in this case.
(See Ex. B to Thomas Decl., ECF No. 248-1.) Allegiance argues—and the Court agrees—that
Premier has not sufficiently documented the expenses it seeks to recover. Premier simply attaches
a chart to Mr. Thomas’s declaration stating its fees incurred. Premier does not provide any invoices

for these fees or any evidence substantiating the amount of these costs or that they were actually
paid to third parties. The Court, cognizant that it “does not serve as a rubber stamp of the requested
fees and costs,” declines to award Premier its costs. See Chicago Title Ins. Corp. v. Magnuson,
No. 2:03-CV-368, 2005 U.S. Dist. LEXIS 43884, *93 (S.D. Ohio Sept. 26, 2005), rev’d in part on
other grounds, 487 F.3d 985 (6th Cir. 2007).
V. PREMIER’S MOTION TO COMPEL PAYMENT OF EXPERT FEES
Premier asks this Court to issue an order compelling Allegiance to (1) reimburse Premier
for its experts’ fees and (2) pay the attorneys’ fees Premier incurred in seeking this order. (ECF
No. 257.) Allegiance opposes this motion, asserting that Premier’s requested fees are unreasonable
and unsupported by adequate documentary evidence. (ECF No. 263.) In addition, Allegiance
requests reimbursement of its own expert witness costs, which Allegiance asks the Court to offset
with any expert fee award entered in favor of Premier. (Id.)
A. Facts and Background

Allegiance sought and took the discovery depositions of Premier’s two experts: Mr.
Biagioli on December 14, 2021 and Mr. Bokhart on April 7 and April 12, 2022. (Mot. to Compel
at 3, ECF No. 257.) Premier advanced payment of its expert fees, which included fees incurred in
preparation for their respective depositions and time spent testifying at their depositions. (Id.)
On July 21, 2022, Premier’s counsel emailed counsel for Allegiance with its demand for
reimbursement. (Id.) Included in this email was a letter detailing the cost breakdown for each
expert witness. (Id.) Mr. Biagioli’s hourly rate was $465.00, and he testified at his deposition for
seven hours and incurred 17 hours in preparation. (Id. at 4.) Thus, Premier requests $11,160.00 for
the 24 total hours Mr. Biagioli billed. (Id.) As for Premier’s other expert witness, Mr. Bokhart
billed at an hourly rate of $725.00, and he incurred 14.5 total hours, divided equally between time

spent preparing for his deposition and testifying at his deposition. (Id. at 8.) Premier requests
$10,512.50 for Mr. Bokhart’s expert fees. (Id.)
Between July 21, 2022 and the filing of its motion to compel, Premier reiterated its request
for reimbursement on seven separate occasions. 4 (Id.) For example, on October 6, 2022, after
inquiring with Allegiance’s counsel as to the status of Premier’s expert deposition costs, Premier’s
counsel represented its willingness to file the present motion should Allegiance fail to reimburse
Premier’s expert fees: “We’ll file a motion on it if we have to but would prefer to avoid the

4 Following Premier’s initial request for reimbursement on July 21, 2022, Premier’s counsel followed up with counsel
for Allegiance on the following dates: September 6, 2022; October 6, 2022; October 12, 2022; October 18, 2022;
October 24, 2022; October 31, 2022; and November 2, 2022. (See Ex. B, ECF No. 257-1.)
unnecessary imposition on the court and our respective clients.” (Ex. B to Mot. to Compel, ECF
No. 257-1.)
On November 3, 2022, a day after Premier’s latest request for fees, Allegiance’s counsel
responded to Premier’s counsel, stating “I sent a proposal to my client for approval on the expert

deposition cost issue. It should be finalized and sent to you guys by no later than Monday with a
proposed check attached.” (Mot. to Compel at 10, ECF No. 257.) Neither Premier nor its counsel
ever received the proposed check. (Id.)
Premier is not alone in its request for expert fees. Premier deposed two of Allegiance’s
expert witnesses, Mr. King and Mr. Terry, and therefore Allegiance also asks the Court to reduce
any award to Premier for its expert fees by the reasonable amount of Allegiance’s expert fees.
Allegiance estimates that its expert fees amount to $5,950.00, which consists of Mr. King’s hourly
rate of $200.00 for approximately 7.25 hours of combined testimony and preparation and Mr.
Terry’s hourly rate of $250.00 for approximately 18 hours of combined testimony and preparation.
(ECF No. 263 at 5.)

B. Discussion
Premier’s motion to compel requests an order from this Court compelling Allegiance to
reimburse Premier for (1) Messrs. Biagioli and Bokhart’s fees incurred in preparing for and
testifying at their respective depositions and (2) Premier’s attorneys’ fees in preparing this motion.
The Court will address each request in turn.
a. Reimbursement of expert witness fees
Rule 26(b)(4)(E)(i) states that “[u]nless manifest injustice would result,” a party must pay
an expert a “reasonable fee” for a deposition. Brunarski v. Miami Univ., 2017 U.S. Dist. LEXIS
25374, *2 (S.D. Ohio Feb. 23, 2017). This “reasonable fee” also includes time spent preparing for
the deposition. See Kohn v. Glenmede Trust Co., N.A., 2019 U.S. Dist. LEXIS 223457, *7-10
(N.D. Ohio Dec. 31, 2019) (collecting cases and rejecting defendants’ argument that
reimbursement of expert fees is limited to only deposition time). While the court retains discretion
to determine the reasonableness of an expert’s fee, certain factors serve to guide the court when

passing on this issue: (1) the expert’s education, training and experience; (2) the prevailing rate for
comparable experts; and (3) the nature and complexity of the information sought. Burgess v.
Fischer, 283 F.R.D. 372, 373 (S.D. Ohio Mar. 27, 2012). “[T]he burden of proving the
reasonableness of an expert’s fees lies with the party seeking reimbursement[.]” Brunarski, 2017
U.S. Dist. LEXIS 25374, at *4. If Premier meets this burden, Allegiance may avoid paying the
requested fees only if it shows that: (1) the expert fees are unreasonable or (2) requiring Allegiance
to pay the fees would be manifestly unjust. See Kohn, 2019 U.S. Dist. LEXIS 223457, at *7.
Here, Allegiance asserts that Premier has failed to carry its burden with respect to the
reasonableness of its requested fees because: “1) Mr. Bokhart’s hourly rate is exorbitant, compared
to average standards; 2) Mr. Biagioli’s preparation time is far more than his deposition time; and

3) Premier failed to support the overall reasonableness of their expert fee requests.” (ECF No. 263
at 3.) The Court agrees in part.
First, Allegiance challenges Mr. Bokhart’s hourly rate of $725.00 as being unreasonably
high. To support this assertion, Allegiance attached to its opposition brief a 2021 survey by SEAK,
Inc., indicating that an average expert witness hourly fee for case preparation is $422.16 and for
depositions is $524. (ECF No. 263 at 3.) Given this data, Allegiance argues that Mr. Bokhart’s rate
should be lowered to reflect the SEAK survey’s average rates. In response, Premier contends that
the Court should give little weight to the survey given that “only 29 of the 1,096 experts surveyed
were intellectual property specialists” like Mr. Bokhart. (Reply at 2, ECF No. 265.) The Court
agrees. Mr. Bokhart is a seasoned expert witness with more than 30 years of experience in
intellectual property and business valuation. (See Bokhart Expert Rep., ECF No. 184-3.) Further,
the scope of his assignment covered his evaluation of the opinions and damages calculations put
forth by Allegiance’s experts—a subject that the Court finds to be substantially complex. Given

the undersigned’s familiarity with expert witness fees in the Southern District of Ohio, coupled
with Mr. Bokhart’s extensive experience and the complexity of the information upon which he
opined, the Court finds that his hourly rate of $725.00 is reasonable.
Second, Allegiance challenges the fees requested on behalf of Mr. Biagioli on the ground
that his hours spent preparing for his deposition dwarfed the hours he spent testifying at his
deposition. The record indicates that Mr. Biagioli spent 24 total hours preparing for and testifying
at his deposition. (Mot. to Compel at 5, ECF No. 257.) Of those 24 hours, Mr. Biagioli devoted 17
hours to his preparation for the deposition, and seven hours for the deposition itself. (Ex. A to Mot.
to Compel, ECF No. 257-1.) Allegiance thus argues that this “ratio of approximately 2.4 hours of
preparation to 1 hour of deposition testimony . . . is unreasonable, especially given the fact the Mr.

Biagioli’s deposition was his first time testifying as an expert, which represents an improper
attempt to shift Biagioli’s learning curve from his client, Premier, onto Allegiance.” (ECF No. 263
at 3.)
The Court agrees with Allegiance. In Kohn, the Northern District of Ohio observed that “it
may be unreasonable to order a party to pay an opposition expert’s fees for . . . preparation time
far in excess of deposition time[.]” 2019 U.S. Dist. LEXIS 223457, at *10. In fleshing out what it
means for an expert’s preparation time to be “far in excess” of the expert’s deposition time, the
Northern District cited to Script Sec. Solutions, LLC v. Amazon.com, Inc., where the Eastern
District of Texas explained that “many courts have limited the recovery to preparation time that
does not exceed the amount of deposition time, and most have declined to require payment for
preparation time when the ratio of preparation time to deposition time exceeds three to one.” 2016
U.S. Dist. LEXIS 156034, *21 (E.D. Tex. Nov. 10, 2016) (collecting cases).
Here, the ratio of preparation time to deposition time is 2.4. Premier’s briefing does not

address why this ratio is appropriate in this case when “many courts” have reduced the recovery
for preparation time that exceeds the duration of the deposition. See id. Premier has also failed to
explain why it is reasonable for Premier to pass those hours attributable to Mr. Biagioli’s
inexperience on to Allegiance. Those extra hours required by a novice expert witness afford no
benefit to the deposing party and thus do not fall within the rationale of Rule 26(b)(4)(E) for
shifting the cost of the expert’s time. See id. at *22–23. Accordingly, the Court will limit Mr.
Biagioli’s hours spent preparing for his deposition to match the time spent testifying at his
deposition. Premier is therefore entitled to $6,510.00 in expert witness fees arising from Mr.
Biagioli work in this case.5
Lastly, Allegiance argues that “Premier presented no evidence to support the

reasonableness of Messrs. Bokhart and Biagioli’s expert fees in its Motion for Costs.” (ECF No.
263 at 4.) The Court largely disagrees, with the only exception being Premier’s failure to justify
10 of Mr. Biagioli’s hours spent preparing for his deposition). In moving for its expert witness
fees, Premier submitted an affidavit from Mr. Krabacher and a letter from Mr. Bokhart. (See Exs.
1 and A to Mot. to Compel, ECF No. 257-1.) Mr. Krabacher’s affidavit establishes the dates on
which Allegiance deposed Premier’s experts, the documents that each expert reviewed or relied
upon in preparing their reports, and that Premier has paid in full the invoices for each expert’s
deposition preparation and testimony. (Ex. 1 to Mot. to Compel at ¶¶ 3-7, ECF No. 257-1.) Mr.

5 $6,510.00 represents 14 hours at Mr. Biagioli’s hourly rate of $465.00—a 1:1 ratio reflecting seven hours of
preparation time and seven hours of deposition time.
Bokhart’s letter sets forth each expert’s hourly rate and time spent preparing for and testifying at
his respective deposition. (Id.) The letter also details the activities involved in each expert’s
preparation for his deposition:
My preparation time included reviewing the documents, legal filings, expert reports
and deposition transcripts identified in my expert report, a review of the rebuttal
expert report of Mr. Terry and a review of my deposition transcript from April 7 in
preparation for the continuation of my deposition on April 12, 2022, and
discussions with counsel.

[. . .]

Mr. Biagioli’s preparation time included reviewing the documents, legal filings and
deposition transcripts identified in his expert report, a review of the documents
produced by the parties subsequent to the filing of his report, and discussions with
counsel.

(Id.)
In addition, each expert report speaks to the expert’s education, training, and experience.
See Biagioli Expert Rep., ECF No. 181-1 (stating, inter alia, that Mr. Biagioli has 10 years of
experience “in the analysis of damages and valuation issues in complex commercial litigation with
an emphasis on matters involving intellectual property rights”); Bokhart Expert Rep., ECF No.
184-3 (detailing Mr. Bokhart’s qualifications, noting that he has 30 years of experience in
“intellectual property (IP) and business valuation”). And each report sheds light on the “nature and
complexity of the information sought.” See Burgess, 283 F.R.D. at 373; see also Biagioli Expert
Rep., ECF No. 181-1 (identifying “Objective and Scope of Assignment”); Bokhart Expert Rep.,
ECF No. 184-3 (providing “Summary of Rebuttal Opinions”). These reports, in conjunction with
Mr. Krabacher’s affidavit and Mr. Bokhart’s letter, adequately prove the reasonableness of
Premier’s requested expert fees; Accordingly, the Court finds that Premier has carried its burden
and Allegiance has failed to establish that the requested expert fees are unreasonable (apart from
the 10 excessive hours Mr. Biagioli spent preparing for his deposition).
In contrast to Premier’s request for expert witness fees, Allegiance’s own request illustrates
the type of situation in which a party fails to carry its burden. In arguing that it is entitled to a
reasonable expert fee, Allegiance states the following, without providing any additional
documentation:

Allegiance estimates that its expert fees amount to $5,950.00. This number is based
on Mr. King’s hourly rate of $200.00 per hour for approximately 7.25 hours of
combined preparation and testimony; and, Mr. Terry’s hourly rate of $250.00 per
hour for approximately 18 hours of combined testimony and preparation.

(ECF No. 263 at 5.) Given the absence of any evidentiary support for its position, the Court finds
that Allegiance has not met its burden to offset its expert fees with Premier’s expert fees. As such,
the Court will not reduce Premier’s award of expert witness fees by those Allegiance claims.6
In sum, the Court finds that Allegiance is responsible for Premier’s expert witness fees in
the following amounts: with respect to Mr. Bokhart’s fees, which consist of 7.25 hours of
preparation time and 7.25 hours of deposition time at his hourly rate of $725.00, Premier is entitled
to $10,512.50; as for Mr. Biagioli’s fees, which consist of seven hours of preparation time and

6 In the event that Allegiance is inclined to formally bring a motion compelling payment of its expert fees, the Court
directs Allegiance’s counsel to review Local Rule 37.1, which provides:

Objections, motions, applications, and requests relating to discovery shall not be filed in this Court
under any provision in Fed. R. Civ. P. 26 or 37 unless the parties have first exhausted among
themselves all extrajudicial means for resolving their differences. After extrajudicial means for the
resolution of differences about discovery have been exhausted, in lieu of immediately filing a motion
under Fed. R. Civ. P. 26 or 37, any party may first seek an informal telephone conference with the
Judge assigned to supervise discovery in the case.

S.D. Ohio Civ. R. 37.1. Simply put, Allegiance should refrain from invoking this Court’s authority until and unless
the parties have “exhausted among themselves all extrajudicial means for resolving their differences.” Id. And to the
extent Allegiance may wish to litigate whether Premier complied with Local Rule 37.1 in bringing the instant motion,
the Court directs Allegiance’s counsel to Local Rule 1.1, which empowers judges in the Southern District to relax
strict adherence to the Local Rules when appropriate. See S.D. Ohio Civ. R. 1.1 (stating that the Local Rules “govern
practice and procedure . . . unless a Judge orders otherwise in a given case”); see also Oro BRC4, LLC v. Silvertree
Apts., Inc., 2022 U.S. Dist. LEXIS 48274, *11-12 (S.D. Ohio Mar. 18, 2022) (recognizing judge’s authority under
Local Rule 1.1 to relax condition-precedents to seeking sanctions set forth in Local Rule 37.1).
seven hours of deposition time at his hourly rate of $465.00, Premier is entitled to $6,510.00. This
results in a total expert fee award of $17,022.50.
b. Entitlement to attorneys’ fees
In addition to seeking reimbursement of its expert witness fees, Premier also requests an

order requiring Allegiance to pay the reasonable attorneys’ fees Premier incurred in bringing its
motion to compel, citing Federal Rule of Civil Procedure 37(a)(5)(A). (ECF No. 257 at 12.)
Rule 37 provides sanctions when a party fails to comply with certain enumerated discovery
provisions. This Rule allows a party to ask the court to compel disclosure or discovery and order
appropriate sanctions. Baked into this Rule is a good faith requirement, which requires a party
seeking an order compelling disclosure or discovery to attach a certification that it has conferred
in good faith with the noncomplying party in an effort to resolve the dispute without the court’s
intervention. Fed. R. Civ. P. 37(a)(1). Rule 37 further provides:
If the motion is granted—or if the disclosure or requested discovery is provided
after the motion was filed—the court must, after giving an opportunity to be heard,
require the party or deponent whose conduct necessitated the motion, the party or
attorney advising that conduct, or both to pay the movant’s reasonable expenses
incurred in making the motion, including attorney’s fees. But the court must not
order this payment if:
(i) the movant filed the motion before attempting in good faith to obtain the
disclosure or discovery without court action;
(ii) the opposing party’s nondisclosure, response, or objection was substantially
justified; or
(iii) other circumstances make an award of expenses unjust.

Fed. R. Civ. P. 37(a)(5)(A).
Notably absent from Rule 37, however, is any provision addressing the issue of sanctioning
a party’s noncompliance with Rule 26(b)(4)(E)(i)—that is, Rule 37 says nothing explicit regarding
a court’s authority to sanction a party that fails to “pay the expert a reasonable fee for time spent
in responding to discovery under Rule 26(b)(4)(A) or (D)[.]” See Fed. R. Civ. P. 37.
Although neither this Court nor the Sixth Circuit have directly grappled with the interplay
between Rules 37 and 26(b)(4)(E), the Court is not venturing into completely uncharted waters. In
New York v. Solvent Chem. Co., the Western District of New York held that Rule 37(a) “inherently
provides authority for the imposition of sanctions” for a party’s noncompliance with Rule

26(b)(4)(E)(i). 2002 U.S. Dist. LEXIS 18601, *35 (W.D.N.Y. Sep. 27, 2002). In reaching this
conclusion, the court noted that the sanctions set forth in Rule 37 “are not exhaustive, and the
Court may impose such sanctions as are just.” Id. (quoting Miltope Corp. v. Hartford Casualty
Insurance Co., 163 F.R.D. 191 (S.D.N.Y. 1995)). The court then analyzed Rule 37’s language and
applied it to the facts before it:
Rule 37(a)(2) allows a party to make a motion to compel discovery required by the
Federal Rules. It specifies that such motions may be brought if a party fails to
comply with Rule 26(a) or Rules 30, 31, 33, 34. Rule 37(a)(3) provides that “for
purposes of this subdivision an evasive or incomplete disclosure, answer, or
response is to be treated as a failure to disclose, answer, or respond.” In this case,
Recochem responded negatively to Solvent’s initial inquiries regarding payment
for Dr. Nauman’s fees and costs, an obligation Recochem clearly had under the
Federal Rules. Solvent brought a motion to compel to force the Recochem
defendants to meet its discovery obligations. This court regards Recochem’s
negative response as a failure to comply with their discovery obligations under Rule
37(a).

Id. at *35–36. Thus, the court awarded the moving party its attorneys’ fees. Id. at *38.
The Western District of New York is not alone in its interpretation of Rule 37. Indeed, the
Western District of Louisiana held that “Rule 37(a) provides authority for the imposition of
sanctions” for a party’s failure to comply with Rule 26(b)(4)(E). Williams v. M-I, LLC, 2006 U.S.
Dist. LEXIS 102352, *5 (W.D. La. Sep. 9, 2006) (citing Solvent Chem. Co., 163 F.R.D. 474–75).
So, too, have the Northern District of Georgia and the Northern District of Illinois. See Dukes v.
State, 428 F. Supp. 2d 1298, 1337 (N.D. Ga. Mar. 30, 2006) (finding the obligation to pay expert
fees “incidental to discovery and therefore within the purview of Fed. R. Civ. P. 37”); Royal
Maccabees Life Ins. Co. v. Malachinski, 2001 U.S. Dist. LEXIS 3362, *57 (N.D. Ill. Mar. 19,
2001) (noting that “a court may issue sanctions for failure to comply with Rule 26 under Rule
37(a)(3) and (4) and under its inherent powers, without a court order”).
But not every court to have addressed this issue has reached the same conclusion. In Payne

Prop. Mgmt. v. City of Mt. Sterling, Kentucky’s Eastern District declined to award fees and costs
under Rule 37:
[The moving party] offers no authority indicating that attorneys’ fees or costs are
recoverable in these circumstances under Rule 37. This rule ostensibly includes
provisions that account for expenses and fees associated with compelling
compliance with certain aspects of discovery itself, but it does not provide for
sanctions relating to a failure to pay for expert witness depositions under Rule
26(b)(4)(E).

2020 U.S. Dist. LEXIS 143779, *11 (E.D. Ky. Aug. 11, 2020).
After reviewing relevant decisions from other jurisdictions, the Court concludes that the
greater body of caselaw appears to permit an award of reasonable attorneys’ fees under Rule 37
when a party fails to pay expert witness fees as required by Rule 26(b)(4)(E). The Court, however,
finds it unnecessary to take a position on this issue here. Instead, the Court will assume, without
deciding, that attorneys’ fees are permissible under Rule 37. But such an award of attorneys’ fees
is inappropriate in this case because Premier has failed to satisfy Fed. R. Civ. P. 37(a)(5)(A)(v)—
that is, Allegiance’s “nondisclosure, response, or objection was substantially justified.”
The Court finds that Allegiance acted with substantial justification in waiting to make
payments to Premier’s experts for three reasons: First and foremost, the Court’s earlier decision
reducing Premier’s requested expert witness fees for Mr. Biagioli establishes a certain degree of
merit to Allegiance’s conduct; second, Allegiance’s counsel at all times acknowledged
Allegiance’s duty to pay Premier’s reasonable expert fees; and third, there appears to be some
ambiguity concerning when the relevant expert fees for depositions became due. The record
establishes that Premier’s counsel issued its last request for its expert fees on November 2, 2022,
to which Allegiance’s counsel represented that Premier should receive a proposed check in the
mail by November 7, 2022. Premier, however, never followed up with Allegiance regarding the
proposed check, nor did Premier convey any kind of deadline to Allegiance concerning when

Premier would seek the Court’s intervention should Allegiance fail to pay Premier’s expert fees.
Therefore, the Court declines to award attorneys’ fees to Premier in connection with its motion to
compel.
VI. CONCLUSION
For the reasons stated herein, it is ORDERED and ADJUDGED as follows:
• Premier’s Motion for Prejudgment Interest is GRANTED. (ECF No. 242.)
Consistent with 28 U.S.C. § 1961, Premier is entitled to prejudgment interest from
June 1, 2018 through August 28, 2022.

• Premier’s Motion for Permanent Injunction is GRANTED. (ECF No. 243.)
Allegiance, its agents, representatives, officers, employees, and all those acting in
concert therewith, are hereby PERMANENTLY ENJOINED from continued
infringement of Premier’s copyrighted Lifetime Loyalty Program Certificate,
including without limitation providing administration or other services relating in
any way to any such Certificate issued after the date of this Order. For avoidance
of doubt, this Order bars Allegiance from administering any program based on a
derivative of Premier’s copyrighted work. Nothing in this Order, however, shall bar
Allegiance from administering an infringing Lifetime Loyalty Program Certificate
that was issued prior to the date of this Order.

• Premier’s Motion for Attorney’s Fees is GRANTED in the amount of $577,736.10.
(ECF No. 248.)

• Premier’s Motion to Compel Expert Fees and Attorneys’ Fees is GRANTED in
part and DENIED in part. (ECF No. 257.) Allegiance is ordered to reimburse
Premier $10,512.50 for Mr. Bokhart’s combined deposition and preparation time
and $6,510.00 for Mr. Biagioli’s combined deposition and preparation time.
Premier is not entitled to its reasonable attorneys’ fees incurred in connection with
bringing its motion to compel.

• Allegiance’s Motion to Stay Briefing on Premier’s Motion for Expert Deposition
Costs is DENIED as moot. (ECF No. 258.)
The Clerk is DIRECTED to CLOSE this case.
IT IS SO ORDERED.
March 28, 2023 /s/ Edmund A. Sargus, Jr.
DATE EDMUND A. SARGUS, JR.
UNITED STATES DISTRICT JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10382075. Public record. Not legal advice.