                                                                                                                           Opinions of the United
2003 Decisions                                                                                                             States Court of Appeals
                                                                                                                              for the Third Circuit


12-23-2003

TDD Entr Inc v. Yeaney
Precedential or Non-Precedential: Non-Precedential

Docket No. 02-3683




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"TDD Entr Inc v. Yeaney" (2003). 2003 Decisions. Paper 31.
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                                                      NOT PRECEDENTIAL

            UNITED STATES COURT OF APPEALS
                 FOR THE THIRD CIRCUIT


                           No. 02-3683


       T.D.D. ENTERPRISES, INC., a California Corporation,
                            d/b/a
                    Tuesday Productions

                                 v.

                 DANIEL YEANEY, individually,
                  d/b/a Digitrax Recording Studio;
                 TODD WILLIAMS, individually,
         d/b/a/ Todd’s Auto Body and Does 1-50, inclusive

                              Todd Williams, individually,
                              d/b/a/ Todd’s Auto Body,
                                                  Appellant




            Appeal from the United States District Court
              for the Middle District of Pennsylvania
               (D.C. Civil Action No. 01-cv-00009)
             District Judge: Honorable Malcolm Muir


            Submitted Under Third Circuit LAR 34.1(a)
                         July 31, 2003

Before: SCIRICA, Chief Judge, RENDELL and AMBRO, Circuit Judges

               (Opinion filed: December 23, 2003)


                            OPINION
AM BRO, Circuit Judge

          Todd Williams appeals a District Court decision awarding T.D.D. Enterprises, Inc.

$64,950.50 in attorneys’ fees that were expended in pursuing (and ultimately settling) a

copyright infringement suit. We conclude that the District Court was correct and

therefore affirm.

                                        I. Background

          Because the facts are well-known to the parties, we note only a general outline.

This dispute arises out of an agreement between Williams and Daniel Yeaney in which

Yeaney agreed to write a musical “jingle” to advertise Williams’s collision repair

business, Todd’s Auto Body. The jingle was aired on radio stations in the Williamsport

and Lock Haven, Pennsylvania areas. Shortly after the jingle began running, Williams

was called by one of T.D.D.’s clients, Troy Nihart of Pool Doctor, who alleged that the

jingle Yeaney had composed was substantially similar to one in which T.D.D. holds

intellectual property rights and which it had licensed to Pool Doctor. (T.D.D.’s primary

source of revenue is fees from licensing its catalogue of jingles to businesses for use in

their advertisements.) Williams initially refused to discontinue use of the allegedly

infringing jingle, but approximately twenty days after first being alerted to the potential

infringement – and about six weeks after the advertisement first aired – agreed to remove

the ad.

          T.D.D. requested damages for the unauthorized use of its intellectual property.

                                                2
When Williams and Yeaney refused, T.D.D. filed suit. After approximately a year and a

half, the parties entered into a settlement agreement in which Williams and Yeaney

admitted the validity of T.D.D.’s copyright and that they had infringed that copyright,

agreed to pay $5,000 in damages, and agreed to be enjoined from further use of Yeaney’s

infringing jingle. However, because the parties could not decide whether or in what

amount Williams and Yeaney would compensate T.D.D. for its attorneys’ fees and costs

expended in defending its copyright, the settlement stated that “it is understood that any

party may petition the Court for an award of attorneys’ fees and costs pursuant to the

Copyright Act of 1976 or other applicable law as a prevailing party . . . .” T.D.D.

subsequently petitioned the District Court for $64,950.50 in attorneys’ fees,1 and both

parties agreed to allow the Court to decide the issue without a hearing. The Court

awarded T.D.D. the fees. Williams appeals.

                                       II. Discussion

       We review the District Court’s award of attorneys’ fees for abuse of discretion.

Lieb v. Topstone Indus., 788 F.2d 151, 154 (3d Cir. 1986); see also Fogarty v. Fantasy,

Inc., 510 U.S. 517, 522-24 (1994). In making the award, the District Court considered the

factors – including deterrence, compensation, the parties’ relative financial strength, and

the defendants’ good faith – discussed in Lieb.



   1
    T.D.D. later sought $16,560.41 in supplemental attorneys’ fees. The Court awarded
approximately 20% of the supplemental fees T.D.D. requested. No appeal was taken
from this order.

                                             3
       The District Court did not abuse its discretion here. As the Court noted, from the

outset of the underlying copyright dispute Yeaney and Williams lacked an objectively

reasonable or good-faith basis to believe that the jingle did not infringe T.D.D.’s

copyrighted work. Yet both Yeaney and Williams steadfastly maintained that their work

did not infringe the copyright, necessitating that T.D.D. hire two music experts, file a

complaint in the District Court, take depositions, and otherwise prepare for litigation.

While Yeaney and Williams challenge the reasonableness of T.D.D.’s hiring both

California copyright counsel and local Pennsylvania litigation counsel, we do not believe

that decision is unreasonable under the circumstances. T.D.D. is a California corporation

and understandably first attempted to resolve the issue using its local counsel who

specialized in copyright. However, when Yeaney and Williams refused to settle and it

seemed that litigation in Pennsylvania was imminent, T.D.D. sensibly hired counsel

familiar with Pennsylvania practice and who was admitted to practice in Pennsylvania

(which T.D.D.’s California counsel was not). As Yeaney and Williams do not challenge

any specific expenditures, we have no basis to conclude that the District Court abused its

discretion by reimbursing any particular expense.

                                      *********

       Having reviewed the record, we conclude that the District Court properly exercised

its discretion awarding T.D.D. attorneys’ fees. We therefore affirm.




                                              4
TO THE CLERK:

    Please file the foregoing Opinion.




                                         By the Court,




                                         /s/ Thomas L. Ambro, Circuit Judge




                                           5
