Page:McCulloch v. Albert E. Price.pdf/7

 ORP filed its complaint for copyright infringement against Price, Inc. on January 16, 1984 based upon the copyrights obtained on its plate in 1979 and 1982, and Price, Inc.’s sale of its plate beginning in 1983. On August 9, 1984, after this action was filed, ORP filed a third application for copyright. On January 10, 1985, the copyright examiner notified ORP that only the three floral illustrations on the plate are subject to copyright protection. Price, Inc. failed to present any evidence that it produced the plates which are the subject of this action in reliance on the filing of the third application or the copyright examiner’s statement that only the flower illustrations are copyrightable. Reliance is an essential element of estoppel. ''United States, Youngstown Welding & Eng’g Co. v. Travelers Indem. Co., 802 F.2d 1164, 1168 (9th Cir.1986); see also 3 M. Nimmer, Nimmer on Copyright'' § 13.07, at 13–133 (“Principles of estoppel applicable elsewhere in the law are equally applicable in copyright infringement actions.”). Under these facts, there was no estoppel.

Finally, Price, Inc. contends the district court abused its discretion in awarding ORP attorney’s fees totalling $24,637.75. Price, Inc. argues the district court did not make a finding of bad faith or frivolity as required by our recent decision in Cooling Systems. Price, Inc. does not challenge the amount of attorney’s fees the district court awarded.

The Copyright Act permits a district court to award attorney’s fees to the prevailing party in its discretion. 17 U.S.C. § 505. We will not reverse such an award absent abuse of discretion. Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1027 (9th Cir.1986), ''cert. denied'', 474 U.S. 1059, 106 S.Ct 802, 88 L.Ed.2d 778 (1986).

In Cooling Systems, the district court awarded attorney’s fees to the defendants under 17 U.S.C. § 505. 777 F.2d at 486. On appeal, plaintiff contended the district court abused its discretion in awarding attorney’s fees without making a finding that the claim for infringement was frivolous or in bad faith. Id. at 486, 493. We explained the applicable standard that must be met to support an award of attorney’s fees in this situation: “Although, in some other circuits, an award of attorneys’ fees to the prevailing party in a copyright case does not require a finding of bad faith or frivolity, we predicate an award under 17 U.S.C. § 505 (1982) on such a finding.” Id. at 493 (citations omitted). After independently reviewing the record, we concluded there was “sufficient indicia of bad faith and frivolity to justify the district court’s holding.” Id.

Cooling Systems is not applicable to the instant matter. Cooling Systems involved an award of attorney’s fees to a prevailing defendant. In the instant case, the district court awarded attorney’s fees to the prevailing plaintiff. “[A] showing of bad faith or frivolity is not a requirement of a grant of fees” to a prevailing plaintiff. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 832 (11th Cir.1982) (emphasis in original). “[T]he considerations prompting an award of fees to a successful plaintiff must of necessity differ from those determining whether a prevailing defendant is entitled to such an award.” Breffort v. I Had A Ball Co., 271 F.Supp. 623, 627 (S.D.N.Y.1967). In this circuit, we have not considered the standard to be applied in copyright cases under 17 U.S.C. § 505 for an award of attorney’s fees when the plaintiff is the prevailing party.

As noted above, we have previously determined that an award of attorney’s fees to a defendant under section 505 must be predicated on a finding of bad faith or frivolity. See, e.g., Lifshitz v. Walter Drake & Sons, Inc., 806 F.2d 1426, 1435 (9th Cir.1986); Cooling Systems, 777 F.2d at 493. “When attorney’s fees are awarded to a prevailing defendant, the award represents a penalty for the institution of a frivolous or bad faith suit.” Jartech, Inc. v. Clancy, 666 F.2d 403, 407 (9th Cir.), ''cert. denied, 459 U.S. 826, 103 S.Ct 58, 74 L.Ed.2d 62 (1982); Hustler Magazine, Inc. v. Moral Majority, Inc.'', 796 F.2d 1148, 1156 (9th Cir.1986). “[A]ttorneys’ fees to