Page:McCulloch v. Albert E. Price.pdf/8

 prevailing defendants [should] be awarded circumspectly to avoid chilling a copyright holder’s incentive to sue on ‘colorable’ claims.” Roth v. Pritikin, 787 F.2d 54, 57 (2d Cir.1986).

Because section 505 is intended in part to encourage the assertion of colorable copyright claims, Roth, 787 F.2d at 57, to deter infringement, Diamond v. Am-Law Publishing Corp., 745 F.2d 142, 148 (2d Cir.1984), and to make the plaintiff whole, Davis v. E.I. DuPont de Nemours & Co., 257 F.Supp. 729, 731 (S.D.N.Y.1966), fees are generally awarded to a prevailing plaintiff. Diamond, 745 F.2d at 148. However, we do not believe Congress intended that the prevailing plaintiff should be awarded attorney’s fees in every case. Lieb v. Topstone Indus., Inc., 788 F.2d 151, 155–56 (3d Cir.1986). Considerations which justify the denial of fees may include (1) the presence of a complex or novel issue of law that the defendant litigates vigorously and in good faith, (2) the defendant’s status as innocent, rather than willful or knowing, infringer, (3) the plaintiff’s prosecution of the case in bad faith, and (4) the defendant’s good faith attempt to avoid infringement. Ford Motor Co. v. B & H Supply, Inc., 646 F.Supp. 975, 992 (D.Minn.1986); Van Halen Music v. Palmer, 626 F.Supp. 1163, 1167 (W.D.Ark.1986); Boz Scaggs Music v. KND Corp., 491 F.Supp. 908, 915 (D.Conn.1980). We do not intend by this recitation to limit the factors to those mentioned above.

The district court did not make a finding concerning the basis for the award of attorney’s fees. Thus we do not know what motivated the district court to award fees. For that reason, we reverse and remand this issue to the district court to make an express finding as to the basis for the award of attorney’s fees. See Lieb, 788 F.2d at 154.

ORP seeks attorney’s fees on appeal under Fed.R.App.P. 38. ORP has not requested attorney’s fees on appeal under 17 U.S.C. § 505.

Federal Rule of Appellate Procedure 38 states that if we “determine that an appeal is frivolous, [we] may award just damages” to the appellee. This may include attorney’s fees. McConnell v. Critchlow, 661 F.2d 116, 118 (9th Cir.1981). “An appeal is considered frivolous in this circuit when the result is obvious, or the appellant’s arguments of error are wholly without merit.” Id. (citations omitted).

In the instant matter, the result was not obvious. The standard to be applied under section 505 in awarding attorney’s fees to a prevailing plaintiff is a novel issue for this circuit. Similarly, we do not find Price, Inc.’s appellate contentions “wholly without merit.” Thus, we decline to award ORP attorney’s fees on appeal under Fed.R.App.P. 38.

AFFIRMED IN PART, REVERSED AND REMANDED IN PART as to the issue of attorney’s fees.