The opinion
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8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
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11 WESTHOFF VERTRIEBSGES MBH, Case No. 22-cv-0938-BAS-SBC
12 Plaintiff,
ORDER DENYING WITH LEAVE
13 v. TO AMEND PLAINTIFF’S MOTION
FOR ATTORNEY’S FEES
14 CHRISTOPHER BERG; BLUESKYE
(ECF No. 77)
CREATIVE, INC.,
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Defendants.
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18 Presently before the Court is Plaintiff’s motion for attorney’s fees and costs. (ECF
19 No. 77.) Plaintiff’s motion presents four requests: (1) attorney’s fees incurred in defending
20 against Defendants’ copyright counterclaims, (2) attorney’s fees incurred in opposing
21 Defendants’ anti-SLAPP motion to strike, (3) a finding that the law firm, Gordon Rees
22 Scully Mansukhani, LLP (“GRSM”), is jointly and severally liable for any fees awarded,
23 and (4) costs. (Id.)
24 The motion has been fully briefed. (ECF Nos. 77, 99, 100, 102.) The Court finds
25 Plaintiff’s motion suitable for determination on the papers submitted. See Fed. R. Civ. P.
26 78(b); Civ. L.R. 7.1(d)(1). For the following reasons, the Court DENIES with leave to
27 amend Plaintiff’s motion.
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1 I. BACKGROUND
2 In May 2020, Plaintiff Westhoff filed a first amended complaint in the Southern
3 District of California against Defendants Berg and BlueSkye, Case No. 20-cv-00928-
4 WQH-MDD, asserting state law claims based on diversity jurisdiction before the
5 Honorable William Q. Hayes. (Lowry Decl. ¶ 4, ECF No. 77-2.) In response, Defendants
6 moved to dismiss, arguing in part that the amount in controversy did not meet the
7 $75,000.00 jurisdictional threshold. (Lowry Decl. ¶ 5; Heffner Decl. ¶ 4, ECF No. 99-1.)
8 Defendants also filed notice of Rule 11 sanctions against Plaintiff, pertaining to the first
9 amended complaint. (Heffner Decl. ¶ 5.) Within the safe harbor period, Plaintiff voluntarily
10 dismissed the action without prejudice and refiled in the San Diego Superior Court the
11 following month. (Heffner Decl. ¶ 6.) The case remained in state court for nearly two years.
12 (Heffner Decl. ¶ 7.)
13 The Court chronologically lists key dates from the state court proceedings. On May
14 12, 2021, Defendants filed a demurrer. (Heffner Decl. ¶ 8.) In a case management
15 conference, on June 11, 2021, the state court judge set the matter for trial in 2022. (Lowry
16 Decl. ¶ 11.) On August 3, 2021, Plaintiff filed a first amended complaint. (Heffner Decl. ¶
17 9.) In August 2021, Defendants put Plaintiff on notice of their intent to file copyright
18 counterclaims. (Lowry Decl. ¶ 12.) The following month, in September 2021, BlueSkye
19 registered the copyrights at issue with the United States Copyright Office. (See, e.g., ECF
20 No. 13-1.)
21 Also, on September 3, 2021, Defendants filed a demurrer to Plaintiff’s first amended
22 complaint. (Heffner Decl. ¶ 10.) The state court judge sustained in part Defendants’ second
23 demurrer with leave to amend some causes of action. (Id.) On April 8, 2022, Plaintiff filed
24 a second amended complaint. (Heffner Decl. ¶ 11.) In response to Plaintiff’s second
25 amended complaint, on May 11, 2022, Defendants filed an answer and a cross-complaint
26 that included the copyright infringement claims. (Heffner Decl. ¶ 12.)
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1 A. Copyright Counterclaims
2 In May of 2022, Defendants filed copyright counterclaims in the state court action,
3 which provided the basis for removal to this Court. (Lowry Decl. ¶ 6.)1 The copyright
4 counterclaim reflected irregularities in the copyright certificates; Defendants then filed an
5 amended copyright counterclaim, which asserted three claims: (1) copyright infringement;
6 (2) vicarious and/or contributory copyright infringement; and (3) violation of California’s
7 Unfair Competition Law. (ECF No. 13.)
8 In response, Plaintiff filed a counter-counterclaim asserting eight claims. (ECF No.
9 21.) Count One alleged its own copyright infringement claim. (Id.) Counts Two through
10 Eight each sought declaratory judgment pursuant to the Declaratory Judgment Act, 28
11 U.S.C. § 2201, on the theory that Defendant Berg could not enforce his copyright claims
12 because of inequitable conduct and unclean hands—specifically, that Defendant Berg had
13 allegedly forged the copyright registration certificates originally filed in the state court
14 proceeding prior to removal. (Id.)
15 Defendants disputed the forgery allegation, arguing that the issues with the copyright
16 registration certificates were the product of a technical error—specifically, that the PDF
17 files were somehow corrupted during processing. (anti-SLAPP Heffner Decl. ¶¶ 3–8, 10,
18 14; ECF No. 31-2.) Defendants contend that the amended counterclaim cured the
19 deficiencies in the copyright registration certificates that Plaintiff identified. (Id. at ¶¶ 11–
20 13; see ECF No. 13.)
21 In response to Plaintiff’s counter-counterclaim, Defendants moved to dismiss. (ECF
22 No. 22.) Plaintiff, in turn, filed a motion for judgment on the pleadings, which the Court
23 later construed as a motion to dismiss. (ECF Nos. 29, 58.)
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26 1 Technically, only Defendant BlueSkye filed the copyright counterclaims, but the Court refers to
Defendants for readability and consistency. (Heffner Decl. ¶ 13, ECF No. 99-1.) And the Court’s Findings
27 of Fact and Conclusions of Law determines that BlueSkye and Mr. Berg are alter egos. The only claim
asserted on behalf of Mr. Berg, in the counterclaim, was the Unfair Competition Law § 17200 violation
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1 B. Anti-SLAPP Motion to Strike
2 Defendants moved to strike Counts Two through Eight of Plaintiff’s counter-
3 counterclaim pursuant to California’s anti-SLAPP statute. (ECF No. 31.) Plaintiff opposed
4 on the ground that the anti-SLAPP statute does not apply to federal causes of action. (ECF
5 No. 34.) Defendants replied that their motion targeted Plaintiff’s equitable defenses to
6 copyright infringement—unclean hands and inequitable conduct—which made the anti-
7 SLAPP statute applicable. (ECF No. 35.)
8 C. Court’s Order and the Motion for Attorney’s Fees
9 On September 6, 2023, the Court issued an order addressing Defendants’ copyright
10 counterclaims, Plaintiff’s counter-counterclaim, and Defendants’ anti-SLAPP motion to
11 strike. (ECF No. 58.) As relevant here, the Court dismissed Defendants’ copyright
12 counterclaims with prejudice, finding that Plaintiff held an unlimited, irrevocable implied
13 license to use the photographs at issue. (Id.) The Court separately denied Defendants’ anti-
14 SLAPP motion to strike. (Id.)
15 On November 22, 2023, Plaintiff filed the pending motion for attorney’s fees and
16 costs. (ECF No. 77.) The motion presents four requests: (1) attorney’s fees incurred in
17 defending against Defendants’ copyright counterclaims under 17 U.S.C. § 505; (2)
18 attorney’s fees incurred in opposing Defendants’ anti-SLAPP motion to strike under
19 California Code of Civil Procedure § 425.16(c)(1); (3) a finding that the firm GRSM is
20 jointly and severally liable for any fees awarded pursuant to 28 U.S.C. § 1927; and (4)
21 costs. (Id.)
22 D. Bankruptcy and Counsel at GRSM Withdraw
23 In December 2023, GRSM moved to withdraw as counsel for Defendants. (ECF No.
24 80.) Plaintiff opposed the withdrawal. (ECF No. 82.) The Court granted the motion to
25 withdraw. (ECF No. 84.)
26 Also in December 2023, both Defendants Berg and BlueSkye filed voluntary
27 bankruptcy proceedings. (ECF No. 83.) The filings triggered an automatic stay of this
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1 proceeding pursuant to 11 U.S.C. § 362. (ECF No. 84.) In February 2024, the Court entered
2 an order staying this action pending resolution of the bankruptcy proceedings. (Id.)
3 On November 4, 2024, the Bankruptcy Court granted Plaintiff relief from the
4 automatic stay, permitting this Court to adjudicate Plaintiff’s claims for accounting,
5 intentional misrepresentation, and breach of fiduciary duty, as well as the pending motion
6 for attorney’s fees and costs. (ECF No. 89.)
7 III. ANALYSIS
8 A. Attorney’s Fees, Copyright, 17 U.S.C. § 505
9 Plaintiff seeks an award of attorney’s fees in the amount of $181,406.22 for
10 defending against Defendants’ copyright counterclaims. (Fee Mot. 14:8–15, ECF No. 77.)
11 The Court denies Plaintiff’s request for the following reasons.
12 Courts “may” award the prevailing party in a copyright-infringement action a
13 discretionary award of costs, including “reasonable attorney’s fees.” 17 U.S.C. § 505; see
14 Fogerty v. Fantasy, Inc., 510 U.S. 517, 533–34 (1994) (emphasizing that “attorney’s fees
15 are to be awarded to prevailing parties only as a matter of the court’s discretion” given that
16 the “word ‘may’ clearly connotes discretion” and “Congress legislates against the strong
17 background of the American Rule”). The standard applies to prevailing plaintiffs and
18 defendants. See Fogerty, 510 U.S. at 534 (1994) (“Prevailing plaintiffs and prevailing
19 defendants are to be treated alike[.]”).
20 The Supreme Court identified the following non-exclusive list of factors to guide the
21 award or denial of attorney’s fees for copyright claims: “frivolousness, motivation,
22 objective unreasonableness (both in the factual and in the legal components of the case),
23 and the need in particular circumstances to advance considerations of compensation and
24 deterrence.” Fogerty, 510 U.S. at 534 n. 19 (citation omitted). The Ninth Circuit
25 additionally considers: “the degree of success obtained, the purposes of the Copyright Act,
26 and whether the chilling effect of attorney’s fees may be too great or impose an inequitable
27 burden on an impecunious plaintiff.” Ets-Hokin v. Skyy Spirits, Inc., 323 F.3d 763, 766 (9th
28 Cir. 2003).
1 “There is no precise rule or formula for making these [fee] determinations” under §
2 505, “but instead equitable discretion should be exercised.” Fogerty, 510 U.S. at 534
3 (citation omitted). In other words, “[d]istrict courts do not necessarily need to analyze all
4 of the factors set out in the cases, as those factors are [] non-exclusive.” Glacier Films
5 (USA), Inc. v. Turchin, 896 F.3d 1033, 1042–43 (9th Cir. 2018).
6 1. Fogerty Factors
7 a. Objective Reasonableness and/or Frivolousness
8 A district court should accord “substantial weight to” the objective reasonableness
9 of the losing party’s legal and factual arguments. Shame On You Prods., Inc. v. Banks, 893
10 F.3d 661, 666 (9th Cir. 2018) (citing Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197,
11 209 (2016) (clarifying that “[a]lthough objective reasonableness carries significant weight,
12 courts must view all the circumstances of a case on their own terms, in light of the
13 Copyright Act’s essential goals.”)).
14 A party’s litigating position can be considered unreasonable when its “chances of
15 success in [the] case were slim to none.” SOFA Ent., Inc. v. Dodger Prods., Inc., 709 F.3d
16 1273, 1280 (9th Cir. 2013); see also Kirtsaeng, 579 U.S. at 205 (“The copyright holder
17 with no reasonable infringement claim has good reason not to bring suit in the first
18 instance[.]”). “[T]he mere fact that [a party] lost cannot establish his objective
19 unreasonability.” Seltzer v. Green Day, Inc., 725 F.3d 1170, 1181 (9th Cir. 2013).
20 Here, Defendants’ copyright counterclaims were objectively reasonable, although
21 weak. Cf. Maljack Prods., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881, 890 (9th
22 Cir. 1996) (finding the claim objectively unreasonable and awarding the defendant
23 attorney’s fees where the plaintiff’s copyright claims were “completely contradicted by the
24 language of the [] contract); Love v. Associated Newspapers, Ltd., 611 F.3d 601, 615 (9th
25 Cir. 2010) (finding the claim objectively unreasonable and awarding the defendant
26 attorney’s fees where the plaintiff “did not hold the copyrights at issue, but was merely a
27 beneficial owner”).
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1 The merits of Defendants’ counterclaim were analyzed under the Effects test, which
2 lays out a three-factor analysis to determine if an implied license exists: (1) the licensee
3 requests the creation of the work, (2) the licensor makes the particular work and delivers it
4 to the licensee who requested it, and (3) the licensor intends that the licensee-requestor
5 copy and distribute his work. See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 558 (9th
6 Cir. 1990); Asset Mktg. Sys., Inc. v. Gagnon, 542 F.3d 748, 756 (9th Cir. 2008).
7 Regarding the first prong of the Effects test, Plaintiff did not explicitly request, in
8 the contract, the photographs. Cf. Effects, 908 F.2d at 556 (“Cohen asked Effects
9 Associates, a small special effects company, to create footage to enhance certain action
10 sequences in the film.”). Nevertheless, the Court threaded together various factors to find
11 that Plaintiff essentially requested the photographs: “The Contract, the parties’ conduct,
12 and common sense all illustrate that Westhoff ‘requested’ the Works for the purpose of the
13 Effects test.” (Sept. Order, 18:9–10, ECF No. 58.) Turning to the second prong, Defendants
14 argued that they did not knowingly transfer the copyright in the photographs to Plaintiff
15 either by transferring the website domain or by sending catalogs. See Effects, 908 F.2d at
16 556 (noting that “the Copyright Act invalidates a purported transfer of ownership unless it
17 is in writing”). Defendants also argued that Plaintiff removed Defendants’ copyright mark
18 next to the photographs. Yet, the Court ultimately determined that Defendants delivered
19 the Photographs given that one of Defendants’ obligations was to create a website and there
20 were no allegations to infer otherwise regarding the catalogs. (Id. at 21:3–6.)
21 The parties also debated the scope of the implied license, and whether it was
22 appropriate for Plaintiff to make the marketing materials containing the photographs
23 available for download to its flower purchasers. The Court determined such access was
24 appropriate according to the terms of the contract. (Sept. Order, 26:11–17.)
25 Regarding the irrevocable nature of the unlimited implied license, the question
26 turned on whether consideration had been given for the license. See Gagnon, 542 F.3d at
27 757; see also Reinicke v. Creative Empire LLC, 38 F. Supp. 3d 1192, 1203 (S.D. Cal. 2014),
28 aff’d, 669 F. App’x 470 (9th Cir. 2016). Defendants argued that the amount compensated
1 covered the labor to take the photographs but did not cover the license to the photographs;
2 yet, the Court noted that the “tactic Defendants seek to employ has been tried and rejected
3 before.” (Sept. Order, 25:16.) The Court mentioned that, “[s]everal times, the Ninth Circuit
4 has quashed post hoc attempts by creators who claim the compensation they received
5 covered their labor but not the actual works produced,” citing to cases dealing with
6 software licensing and the payment of $56,000.00 for movie footage. (Id. at 25:16–18.)
7 In the attorney’s fees briefing, Defendants also note that in fall of 2022, Plaintiff
8 asked Defendant BlueSkye to assign its registered copyrights to the Plaintiff—a request
9 inconsistent with a clear irrevocable implied license. (Heffner Decl. ¶ 28.) Hence, although
10 Defendants ultimately lost on the merits, their claim lacks the markings of objective
11 unreasonableness.
12 A claim is frivolous when its factual allegations are “‘clearly baseless,’ such as
13 factual claims that are ‘fantastic or delusional scenarios.’” Perfect 10, Inc. v. Visa Int’l
14 Serv. Ass’n, No. 04-cv-00371 JW, 2005 WL 2007932, at *4 (N.D. Cal. Aug. 12, 2005)
15 (citation omitted). “A claim is not frivolous merely because it is unsuccessful.” Bisson-
16 Dath v. Sony Computer Entm’t Am. Inc., 2012 WL 3025402, at *2 (N.D. Cal. July 24,
17 2012).2 Here, Defendants’ copyright counterclaims were not frivolous, for the same
18 reasons that the Court found that Defendants’ claims were not objectively unreasonable.
19 Thus, the Court finds these factors weigh against granting attorney’s fees.
20 b. Motivation
21 “A finding of bad faith can be based on actions that led to the lawsuit, as well as on
22 the conduct of the litigation.” Epikhin v. Game Insight N. Am., No. 14-CV-04383-LHK,
23 2016 WL 1258690, at *6 (N.D. Cal. Mar. 31, 2016) (citation omitted). Where a case
24 involves difficult questions of law, or “substantial questions of first impression,” it weighs
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27 2 Plaintiff states that the Ninth Circuit has affirmed dismissal of “federal claims as frivolous” when
a “[party] pleaded himself out of court,” Sprewell v. Golden State Warriors, 266 F.3d 979, 984, 989 (9th
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1 against a finding that arguments were made in bad faith. Lifshitz v. Walter Drake & Sons,
2 Inc., 806 F.2d 1426, 1435 (9th Cir. 1986).
3 Here, the Court questions Defendants’ motivation in bringing copyright
4 counterclaims so many years into the litigation. As explained above, this action began in
5 federal court. Regardless of the reason, Plaintiff voluntarily dismissed the federal action
6 and refiled in state court. Several years later, after the state court set a trial date, Defendants
7 asserted copyright counterclaims, which removed the action back to federal court.
8 Plaintiff does not allege or show that Defendants knew about the copyright violations
9 beforehand, and Defendants’ brief does not elucidate when Mr. Berg knew of Plaintiff’s
10 alleged copyright infringement. (BlueSkye/Berg Opp’n 4:19–20, ECF No. 100.) Of note,
11 GRSM attaches an email in which Plaintiff e-mailed Defendant Berg in 2018, asking:
12 “what would it cost when you design the new catalog for us?” (Heffner Decl. ¶ 27, Ex. A.)
13 Defendant Berg responded, quoting $5,000.00. (Id., at p. 1.) But this email does not put
14 Mr. Berg on notice that Plaintiff intended to use the photographs. Even if Defendants knew
15 about Plaintiff’s use of the photographs, Plaintiff has not shown bad faith.
16 Plaintiff does not cite case law that moving from federal court to state court then
17 back up to federal court, without more, constitutes bad faith—and the Court does not make
18 the inference based on such circumstantial evidence. See ZilYen, Inc. v. Rubber Mfrs. Ass’n,
19 958 F. Supp. 2d 215, 221 (D.D.C. 2013) (“On the record here, the Court would have to
20 speculate to reach the conclusion that the plaintiff had an inappropriate motivation in
21 bringing this litigation or acted in bad faith in conducting it. That the Court cannot do.”).
22 In making its conclusion, the Court also takes into consideration the pace of court
23 proceedings and highlights that some delay can be attributed to the fact that Plaintiff twice
24 amended its complaint in state court, changing theories after each amendment. (Heffner
25 Decl. ¶¶ 7–11.) Also, Defendants shared their intent to file copyright counterclaims in
26 advance. (Lowry Decl. ¶ 12.) Further, the Court notes that the copyright counterclaims
27 were neither frivolous nor objectively unreasonable. Hence, the Court considers this factor
28 to weigh neither against nor in favor of attorney’s fees.
1 c. Compensation and Deterrence
2 Courts must be “faithful to the purposes of the Copyright Act” in awarding
3 attorney’s fees under § 505, and requests for compensation are considered in light of the
4 strong tradition that each party generally bears its own attorney’s fees. Fogerty, 510 U.S.
5 at 533–34.
6 Regarding deterrence interests, courts may award attorney’s fees when plaintiffs
7 press factually or legally baseless claims, in order to discourage others like them. See, e.g.,
8 Cobbler Nevada, LLC v. Gonzales, 901 F.3d 1142, 1149 (9th Cir. 2018) (affirming fee
9 award when the plaintiff lacked “a reasonable factual basis” to assert a claim against the
10 defendant). “[E]ven if the losing position was reasonable in a particular case,” a court may
11 award fees “to deter repeated instances of copyright infringement or overaggressive
12 assertions of copyright claims.” Kirtsaeng, 579 U.S. at 209.
13 Compensation and deterrence interests, nevertheless, should not dissuade “plaintiffs
14 acting in good faith and with potentially meritorious claims [] from seeking to protect their
15 copyrights” because of the “fear of a large attorney’s fees award.” Epikhin, 2016 WL
16 1258690, at *8.
17 Here, Plaintiff argues that the award would serve as a deterrence, compelling
18 litigants to consider federal counterclaims before seeking to remand an action to state court.
19 Although Plaintiff cites to some cases like Gable v. Nat’l Broad. Co., 438 F. App’x 587,
20 589 (9th Cir. 2011) (citation modified), for the proposition that a fee award “helps to
21 prevent the filing of similarly meritless copyright actions in the future,” Defendants’
22 copyright counterclaims were neither frivolous nor objectively unreasonable. And
23 Defendants did not demonstrate bad faith. Therefore, an award of attorney’s fees is neither
24 appropriate to compensate Plaintiff, in abandonment of the American Rule, nor to deter
25 Defendants or others similarly situated from filing such suits; the Court considers this
26 factor to weigh against a fee award.
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1 d. Purposes of the Copyright Act and Other Ninth Circuit
2 Considerations
3 “[C]omplete success” on the merits—and not on a technical defense—weighs in
4 favor of an award of attorney’s fees. See Tresóna Multimedia, LLC v. Burbank High Sch.
5 Vocal Music Ass’n, 953 F.3d 638, 653 (9th Cir. 2020). Here, Plaintiff succeeded at the
6 motion to dismiss stage by receiving a dismissal of Defendants’ copyright counterclaims
7 without leave to amend. As Plaintiff’s highlight, the Court mentioned that Defendants
8 “pleaded themselves out of court.” (Sept. Order, 16:5–6.) This factor weighs in favor of
9 attorney’s fees; however, where “[t]he only factor to weigh in [copyright defendants’] favor
10 is the degree of success obtained,” an award of fees is not merited. See Ets-Hokin, 323 F.3d
11 at 766.
12 Whether an award of fees furthers the purposes of the Copyright is the guiding
13 question underlying all the factors. See Mattel Inc. v. MGA Entm’t, 705 F.3d 1108, 1111
14 (9th Cir. 2013) (“The most important factor in determining whether to award fees under
15 the Copyright Act, is whether an award will further the purposes of the Act.”); Inhale, Inc.
16 v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1043 (9th Cir. 2014), as amended (July 9, 2014)
17 (“A successful defense furthers the purposes of the Copyright Act just as much as a
18 successful infringement suit does.”). Here, an award of fees in this personal business
19 dispute does not readily promote the goal of public access to creative works. And the Court
20 cannot say that an award of attorney’s fees would chill legitimate copyright enforcement.
21 Hence, the Court considers the purposes of the Copyright Act neither favored nor
22 disfavored by a fee award.
23 Upon weighing the factors and considering the briefing, the Court exercises its
24 discretion to decline an award of attorney’s fees to Plaintiff pursuant to the Copyright Act,
25 17 U.S.C. § 505.
26
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1 B. Attorney’s Fees, Anti-SLAPP, Cal. Civ. Proc. Code § 425.16(c)(1)
2 Plaintiff seeks an award of attorney’s fees and costs in the amount of $9,484.00 for
3 defending against Defendants’ anti-SLAPP motion to strike. (Fee Mot. 15:4–5.) The Court
4 denies Plaintiff’s request for the following reasons.
5 California’s anti-SLAPP statute authorizes the pre-trial dismissal of “SLAPPs,”
6 which stands for “Strategic Lawsuits Against Public Participation”. See Metabolife Int’l,
7 Inc. v. Wornick, 264 F.3d 832, 839 (9th Cir. 2001); see also Rogers v. Home Shopping
8 Network, Inc., 57 F. Supp. 2d 973, 974 (C.D. Cal. 1999).
9 The opening paragraph of § 425.16(a) explains the purpose of the statute:
10 The Legislature finds and declares that there has been a
11 disturbing increase in lawsuits brought primarily to chill the valid
12 exercise of the constitutional rights of freedom of speech and
13 petition for the redress of grievances. The Legislature finds and
14 declares that it is in the public interest to encourage continued
15 participation in matters of public significance, and that this
16 participation should not be chilled through abuse of the judicial
17 process. To this end, this section shall be construed broadly.
18 Cal. Civ. Proc. Code § 425.16(a); see Metabolife, 264 F.3d at 839 (stating that the statute
19 aims to identify “meritless first amendment cases aimed at chilling expression through
20 costly, time-consuming litigation”).
21 Because SLAPP suits seek to deplete “the defendant’s energy” and drain “his or her
22 resources,” the legislature sought “to prevent SLAPPs by ending them early and without
23 great cost to the SLAPP target.” Kibler v. N. Inyo Cnty. Local Hop. Dist., 39 Cal. 4th 192,
24 197 (2006) (citations omitted). “Thus, in promulgating [§] 425.16, the California
25 legislature provided that a ‘special motion to strike may be brought early in the lawsuit and
26 that discovery ordinarily may not proceed unless and until the court finds that the
27 [plaintiff’s] suit has a probability of success.’” Aeroplate Corp. v. Arch Ins. Co., No. 06-
28
1 cv-1099-AWI-SMS, 2006 WL 3257487, at *3 (E.D. Cal. Nov. 9, 2006) (quoting Rogers,
2 57 F. Supp. 2d at 976).
3 A § 425.16 motion to strike does not apply to federal claims presented in federal
4 courts, see Bulletin Displays, LLC v. Regency Outdoor Adver., Inc., 448 F. Supp. 2d 1172,
5 1182 (C.D. Cal. 2006), but the anti-SLAPP statute can apply to “state law claims that
6 federal courts hear pursuant to their diversity jurisdiction,” Hilton v. Hallmark Cards, 599
7 F.3d 894, 900 n.2 (9th Cir. 2010); see also Globetrotter Software, Inc. v. Elan Computer
8 Grp., Inc., 63 F. Supp. 2d 1127, 1130 (N.D. Cal. 1999) (“The Erie doctrine applies to
9 pendent state law claims to the same extent it applies to state law claims before a federal
10 court on the basis of diversity jurisdiction.”).
11 Consistent with its purpose of protecting a defendant from abusive litigation, the
12 anti-SLAPP statute contains a fee-shifting provision whose standard turns on which party
13 prevailed. The attorney’s fees provision of the statute provides:
14 [A] prevailing defendant on a special motion to strike shall be
15 entitled to recover his or her attorney’s fees and costs. If the court
16 finds that a special motion to strike is frivolous or is solely
17 intended to cause unnecessary delay, the court shall award costs
18 and reasonable attorney’s fees to a plaintiff prevailing on the
19 motion[.]
20 Cal. Civ. Proc. Code § 425.16(c)(1).
21 Here, the Court finds that the anti-SLAPP motion was neither frivolous nor solely
22 intended to cause unnecessary delay, and thus does not award Plaintiff’s attorney’s fees.3
23 As discussed, Defendants moved to strike Plaintiff’s equitable defense of unclean hands
24 asserted through the vehicle of the Declaratory Judgment Act. (anti-SLAPP Reply 2:12-
25 5:21, ECF No. 35.) At first glance, Defendants’ request to apply a state law motion to strike
26
27
3 California Civil Procedure Code § 128.5(b)(2) defines “frivolous” as “totally and completely
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1 to an equitable defense to a federal copyright claim appears borderline frivolous. But a
2 closer look at the parties’ briefing and the case law suggests the motion was not frivolous.
3 First, Defendants’ motion indicates they understood Plaintiff’s counter-
4 counterclaims, regarding the equitable defense of unclean hands, to pertain to state law for
5 the following reasons. In essence, Plaintiff’s unclean hands claim did not allege that Mr.
6 Berg engaged in inequitable conduct before the Copyright Office in procuring the
7 copyright registrations. Rather, Plaintiff alleged that Defendants submitted falsified
8 copyright registration certificates in this proceeding—misconduct directed at the Court, not
9 the Copyright Office. Plaintiff’s invocation of unclean hands was thus based on forgery,
10 which sounded in Plaintiff’s state law fraud claims. In fact, Plaintiff’s opposition
11 emphasized the state law fraud claims and attached exhibits relating to them. (ECF No. 34-
12 2, Ex. A.) In other words, Plaintiff’s opposition blurs the lines between allegations of
13 forgery during the business relationship and in the copyright certifications to suggest that
14 fraud is Defendants’ modus operandi.
15 Plaintiff’s anti-SLAPP motion reflects such understanding, stating, “Westhoff’s
16 counter-counter-complaint serves one purpose only: punish Defendants for filing legal
17 claims against it, and force them to defend yet another meritless (although serious)
18 accusation of forgery and fraud they did not commit.” (anti-SLAPP Mot. 7:15–17, ECF
19 No. 31.) Elsewhere, the motion states: “Westhoff alleges Defendants forged the first-filed
20 exhibits and committed fraud on the Court[.]” (Id. at 9:13–14.) This interpretation of
21 Plaintiff’s equitable defense ties it to state law fraud allegations.
22 Turning to the case law, Plaintiff’s brief correctly noted that the Ninth Circuit has
23 rejected the application of the anti-SLAPP statute to federal intellectual property statutes,
24 stating: “Indeed, [the defendant] could not have moved to strike the Lanham Act claim
25 because, as the parties agree, the anti-SLAPP statute does not apply to federal law causes
26 of action.” Hilton v. Hallmark Cards, 599 F.3d 894, 901 (9th Cir. 2010). But Defendants
27 raised the anti-SLAPP statute not as to the copyright claims but as to the equitable defense
28 of unclean hands. And Defendants point out that not every copyright-related issue is
1 governed by federal law. See Scholastic Ent., Inc. v. Fox Ent. Grp., Inc., 336 F.3d 982 (9th
2 Cir. 2003) (“Because questions regarding the ownership of a copyright are governed by
3 state law, we determine that subject matter jurisdiction is lacking[.]); Foad Consulting
4 Grp., Inc. v. Azzalino, 270 F.3d 821 (9th Cir. 2001) (“Which law, state or federal, governs
5 the creation of an implied, nonexclusive copyright license? We conclude that while federal
6 law answers the threshold question of whether an implied, nonexclusive copyright license
7 can be granted (it can), state law determines the contract question: whether a copyright
8 holder has, in fact, granted such a license.”).
9 The Court acknowledges that Defendants offer no authority in which a federal court
10 has treated an equitable defense to a copyright claim as a state law claim subject to
11 California’s anti-SLAPP statute. The Court’s survey of the case law suggests that courts
12 rarely specify “federal” or “state” when discussing equitable defenses. See, e.g., Petrella
13 v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014). Perhaps the specification of whether
14 the equitable defense arises out of state law or federal law does not matter in many cases
15 because the analysis is similar. See, e.g., Manser v. Sierra Foothills Pub. Util. Dist., No.
16 CV-F-08-1250LJO SMS, 2010 WL 3521770, at *3 (E.D. Cal. Sept. 7, 2010) (“Federal
17 common law of equitable estoppel and California equitable estoppel have the same basic
18 elements.”). Nevertheless, it matters here. See, e.g., Jones v. Cnty. of San Diego, No.
19 20CV1989-GPC(DEB), 2022 WL 3084588, at *6 (S.D. Cal. Aug. 2, 2022), aff’d, No. 22-
20 55921, 2023 WL 8227562 (9th Cir. Nov. 28, 2023) (“[E]quitable tolling under federal law
21 and California state law is distinct[.]”).
22 The Court understands an equitable defense to a federal copyright claim to be a
23 federal equitable defense. See Audit Servs., Inc. v. Rolfson, 641 F.2d 757, 762 (9th Cir.
24 1981) (“Because an action brought under § 301(a) of the Labor Management Relations Act
25 is an action arising under a federal statute, the federal common law, rather than state law,
26 is controlling with respect to the availability of the estoppel defense.”); Shropshire v. Fred
27 Rappoport Co., 294 F. Supp. 2d 1085, 1098 (N.D. Cal. 2003) (“Both parties suggest in
28 their briefs that the elements of equitable estoppel are governed by California law. In fact,
1 Defendant’s equitable estoppel defense is governed by federal common law because the
2 action arises under a federal statute.”); U.S. Const. art. VI, cl. 2 (Supremacy Clause).
3 However, because of the parties’ briefing and the case law on this question, the Court
4 cannot say Defendants’ motion was frivolous.
5 And Plaintiff does not provide evidence from which the Court can determine that
6 Defendants filed a motion to strike solely with the intent to cause unnecessary delay. The
7 Court relies in part on Defendants’ briefing, which suggests that they attempted to address
8 and remedy the issue with Plaintiff through email and telephone communications before
9 filing the motion to strike. (anti-SLAPP Heffner Decl. ¶¶ 10–12, 15–17.)
10 In any case, the Court resolved the issue on the basis of the Declaratory Judgement
11 Act. (Sept. Order 31:1–3.) The Court cited to three district court opinions, which were not
12 identified by the parties (Id. at 30:23–31:16) further weakening any argument that the anti-
13 SLAPP motion was frivolous.
14 Thus, given that the Court finds that Defendants’ motion to strike was neither
15 frivolous nor solely intended to cause unnecessary delay, the Court denies Plaintiff’s
16 demand for costs and attorney’s fees under the California statute § 425.16(c)(1).
17 C. Joint and Several Liability for GRSM, 28 U.S.C. § 1927
18 Plaintiff seeks to hold counsel of GRSM jointly and severally liable for any award
19 of attorney’s fees pursuant to 28 U.S.C. § 1927. (Fee Mot. 16:4–5.) The Court denies
20 Plaintiff’s request for the following reasons.
21 As discussed, under the American Rule, each party bears its own attorney’s fees
22 regardless of the outcome of the litigation. See Fogerty, 510 U.S. at 534. Yet Congress and
23 state legislatures have carved out exceptions to this default through fee-shifting statutes—
24 such as the Copyright Act and California’s anti-SLAPP statute—that allow a prevailing
25 party to recover attorney’s fees from the opposing party subject to the court’s
26 determinations. Any award of attorney’s fees, however, is paid for by the party. See, e.g.,
27 Grayson, Givner, Booke, Silver & Wolfe v. Old Republic Ins. Co., 152 F.3d 925 (9th Cir.
28
1 1998) (“Under California law, attorney’s fees are ordinarily to be paid by the party
2 employing the attorney.”).
3 Section 1927 operates differently. Rather than shifting fees between parties based
4 on who prevailed, the statute imposes personal liability on an attorney whose conduct
5 unreasonably and vexatiously multiplies the proceedings—independent of whether the
6 client’s underlying position had merit. Congress enacted § 1927 in part to deter abusive
7 litigation tactics that drive up costs without serving a legitimate purpose.
8 The statute provides:
9 Any attorney or other person admitted to conduct cases in any
10 court of the United States . . . thereof who so multiplies the
11 proceedings in any case unreasonably and vexatiously may be
12 required by the court to satisfy personally the excess costs,
13 expenses, and attorneys’ fees reasonably incurred because of
14 such conduct.
15 28 U.S.C. § 1927.
16 Here, Plaintiff’s invocation of § 1927 fails on a technicality and on the merits.
17 Regarding the technicality, Plaintiff did not properly raise the statute against an attorney’s
18 conduct, but instead referenced “Defendants’ counsel GRSM.” (Fee Mot. 16:4–5, 12–14.)4
19 One cannot sue a law firm pursuant to § 1927. See Kaass Law v. Wells Fargo Bank, N.A.,
20 799 F.3d 1290, 1293 (9th Cir. 2015). Plaintiff nevertheless argues that it used such
21 language to keep things less “personal”; Plaintiff identifies three GRSM partners Heffner,
22 Cawdrey, and Sybert in its reply brief. (Fee Reply 1:18–20, ECF No. 102.) The Court
23 would need to generously read the briefing to find that Plaintiff invokes the statute against
24 an attorney.
25
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4 Elsewhere in the paragraph for § 1927 liability, Plaintiff refers to “Gordon Rees” and the firm as
27 an “it.” (See Fee Mot. 16:13:15, ECF No. 77) (“To the extent Gordon Rees wants to shift blame, in whole
or in part to Defendants, it should be required to provide enough evidence to overcome the
28
1 But even if Plaintiff did properly assert the statute against attorney conduct, Plaintiff
2 fails to show that the identified partners acted with subjective bad faith regarding any
3 filings. See In re Keegan Management Co., Securities Litigation, 78 F.3d 431, 436 (9th
4 Cir. 1996) (stating that § 1927 sanctions “must be supported by a finding of subjective bad
5 faith” (citation omitted)). “Bad faith is present when an attorney knowingly or recklessly
6 raises a frivolous argument, or argues a meritorious claim for the purpose of harassing an
7 opponent.” Id. (citation omitted).
8 Here, Plaintiff has not shown that the attorneys knowingly or recklessly raised
9 frivolous arguments or intended to harass. Plaintiff identifies several bases from which to
10 draw an inference of subjective bad faith:
11 • first removing this case to state court, sitting on its copyright
12 counterclaims for two years, only to remove this case back to this
13 Court;
14 • filing two copyright counterclaims contradicting Berg’s
15 previous claim that he was a Westhoff employee and never
16 owned the asserted copyrights;
17 • maintaining a complaint against Westhoff for well over a year
18 that admitted Westhoff had a license and right to use the asserted
19 copyrights; and
20 • filing a frivolous anti-SLAPP motion.
21 (Fee Mot. 16:16–23.)
22 For the reasons discussed above, Plaintiff has not established improper motivation
23 in the removal proceeding. And Plaintiff does not cite specific documents or declarations
24 establishing that these three attorneys knowingly or recklessly filed frivolous copyright
25 claims. Further, the Court does not find the anti-SLAPP motion to be frivolous. Plaintiff
26 cites no additional case law in its moving paper in support of its analysis. The Court cannot
27 draw an inference of subjective bad faith based on these allegations.
28
1 In the alternative, Plaintiff could rely on the Court’s inherent power to levy sanctions
2 against attorneys. See Fink v. Gomez, 239 F.3d 989, 994 (9th Cir. 2001) (discussing the
3 Court’s inherent authority to grant sanctions against attorneys “for a variety of types of
4 willful actions, including recklessness when combined with an additional factor such as
5 frivolousness, harassment, or an improper purpose”). Plaintiff for the first time in reply
6 mentions the Court’s inherent power to levy sanctions. (Fee Reply 2:7–11.) Yet, Plaintiff
7 did not ask the Court to use its inherent power. To the extent Plaintiff suggests the Court
8 should invoke its inherent authority here, the Court finds the request not appropriate. In
9 part because Defendants did not have an opportunity to respond to this basis of sanctions,
10 the Court declines to exercise its inherent powers.
11 Hence, the Court denies Plaintiff’s request to hold the three GRSM partners jointly
12 and severally liable for any fees or costs.
13 D. Costs
14 Plaintiff seeks to recover $12,537.47 in costs for defending against Defendants’
15 copyright counterclaims. (Fee Mot. 15:14–15.)
16 The Copyright Act gives district courts discretion to award “full costs” to a party in
17 copyright litigation. See 17 U.S.C. § 505. Congress has specified six categories of litigation
18 expenses that qualify as “costs.” See 28 U.S.C. §§ 1821, 1920. “In copyright cases, § 505’s
19 authorization for the award of ‘full costs’ [] covers only the six categories specified in the
20 general costs statute, codified at §§ 1821 and 1920.” Rimini St., Inc. v. Oracle USA, Inc.,
21 586 U.S. 334, 336–37 (2019).
22 Given that Plaintiff’s request for costs does not conform to the Supreme Court’s
23 limitation in Remini, the Court denies with leave to amend the request.
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1 CONCLUSION
2 Accordingly, the Court DENIES Plaintiff's motion for attorney’s fees under the
3 ||copyright and anti-SLAPP statutes, and the Court does not hold GRSM jointly and
4 ||severally liable, but the Court DENIES with leave to amend as to any costs under 17
5 U.S.C. § 505. (ECF No. 77.)
6 IT IS SO ORDERED.
7 ~
8 || DATED: May 29, 2026 (yatta Bahar □□
9 H n. Cynthia Bashant, Chief Judge
United States District Court
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