IP UPDATE
Exploring the latest in intellectual property law
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Exploring the latest in intellectual property law
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Epic omission: District court must address pre-suit notice of potential patent ineligibility when denying sanctions, fees

by | Oct 8, 2026 |

Addressing a district court’s denial of motions for Rule 11 sanctions and attorneys’ fees and costs, the US Court of Appeals for the Federal Circuit vacated and remanded, finding that the district court had not adequately explained why a patentee’s pre-suit notice of potential invalidity under 35 U.S.C. § 101 did not render its infringement suit unreasonable. Epic Tech, LLC v. Pen-Tech Associates, Inc., Case No. 25-1624 (Fed. Cir. Sept. 30, 2026) (Moore, C.J.; Cunningham, J.; Subramanian, Distr. J., sitting by designation).

Epic Tech owns a patent directed to an electronic gaming system that connects gaming terminals to a server network so that an initial game can run while a secondary game operates in the background. After the patent issued in 2013, several related applications encountered validity problems during prosecution. One related application was rejected on nonstatutory double patenting grounds over claims of the issued patent. After the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, the United States Patent and Trademark Office (USPTO) rejected claims in that application and two other related applications under § 101. Epic Tech ultimately abandoned all three applications.

Epic Tech later asserted another related patent in the US District Court for the Southern District of Texas. That district court found the asserted claims patent ineligible under § 101, although the decision was later vacated.

In 2020, Epic Tech sued Pen-Tech in the District Court for the Northern District of Georgia for infringement of the gaming system patent. On summary judgment, the district court found the asserted claims ineligible under § 101 under the two-step Alice framework. Pen-Tech then sought Rule 11 sanctions against Epic Tech and its counsel, as well as attorneys’ fees and costs under 35 U.S.C. § 285, 28 U.S.C. § 1927, and the court’s inherent authority.

Pen-Tech argued that several developments should have put Epic Tech and its counsel on notice that the asserted patent faced a serious § 101 problem before suit was filed, including the Supreme Court’s decision in Alice, the USPTO’s § 101 rejections in related applications, and the district court’s ineligibility decision involving another related patent. According to Pen-Tech, those circumstances required Epic Tech to conduct a meaningful pre-suit validity investigation.

The district court denied the motions, concluding that Epic Tech’s and its counsel’s positions were not frivolous, that the case was not exceptional, and that the litigation had not been pursued unreasonably or vexatiously. Pen-Tech appealed.

The Federal Circuit vacated, finding that the district court’s explanation was insufficient to permit meaningful appellate review. The Court emphasized that the combination of Alice, the USPTO’s post-Alice rejections of related claims, and the prior district court ineligibility ruling created a “compelling concern over the validity” of the asserted claims. Two of the related applications were particularly significant because the USPTO had previously found their claims patentably indistinct from the asserted patent.

The Federal Circuit found that the district court had not meaningfully addressed Pen-Tech’s notice theory. The district court relied in part on Epic Tech’s pre-suit [...]

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Diamond in the rough: Infringement theory foreclosed by claim construction supports $3.2M fee award

by | Oct 1, 2026 |

The US Court of Appeals for the Federal Circuit affirmed an award of more than $3.2 million in attorneys’ fees and non-taxable expenses, finding no abuse of discretion in the district court’s determination that the patent owner and its exclusive licensee continued to pursue an objectively baseless infringement theory after claim construction and discovery foreclosed their position. Carnegie Institution of Washington v. Fenix Diamonds LLC, Case Nos. 24-1804; -1824 (Fed. Cir. Sept. 17, 2026) (Reyna, Taranto, Stoll, JJ.) (nonprecedential).

Carnegie Institution of Washington and its exclusive licensee, M7D Corporation, sued Fenix Diamonds for infringement of two patents directed to methods for producing lab-grown diamonds using chemical vapor deposition. The asserted claims required growing single-crystal diamonds on a growth surface with only insubstantial non-monocrystalline growth. After claim construction, Fenix produced evidence from its manufacturer, Nouveau Diamonds, showing extensive polycrystalline and nondiamond growth. The district court subsequently granted summary judgment of noninfringement.

After the plaintiffs voluntarily dismissed their appeal following M7D’s financial collapse, the district court found the case exceptional under 35 U.S.C. § 285. It concluded that the plaintiffs’ infringement theory became objectively baseless once they received Nouveau’s evidence – approximately one month before the date from which the court ultimately shifted fees. The district court also exercised its inherent authority to award nontaxable expenses, including expert fees, based on what it viewed as vexatious and unreasonable litigation conduct. Among other things, the district court cited a misleading representation concerning access to a facility and the plaintiffs’ eleventh-hour abandonment of one of the asserted patents. Carnegie appealed.

Carnegie argued that its expert’s infringement theory represented a reasonable application of the district court’s claim construction rather than an attempt to relitigate it. The Federal Circuit disagreed. The district court had expressly construed the disputed “growth surface” limitation as not categorically excluding polycrystalline growth. According to the Federal Circuit, the expert’s attempt to exclude a subset of such growth effectively reintroduced a limitation that the district court had rejected. The district court therefore did not abuse its discretion in concluding that the infringement theory was inconsistent with the governing claim construction.

The Federal Circuit also rejected Carnegie’s challenges to the scope and amount of the award. On causation, the Court explained that once a district court identifies the point at which continued litigation became objectively baseless, it need not tie each subsequent fee to a discrete act of misconduct. The district court could therefore shift all reasonable fees incurred after that point.

The Federal Circuit also affirmed the imposition of joint-and-several liability on Carnegie. Although Carnegie characterized itself as a passive licensor, the Court pointed to its close and intertwined relationship with M7D, including shared counsel, joint litigation filings, and consultation rights under the license agreement. Those circumstances supported holding Carnegie responsible for the fee award along with M7D.

Finally, the Federal Circuit affirmed the denial of Fenix’s request for prejudgment interest. Fenix had not sought prejudgment interest before the district court issued its exceptional-case ruling and, when Fenix later raised the issue, [...]

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Off the mark: NPE licensees must comply with patent marking for pre-suit damages

by | Aug 27, 2026 |

Affirming dismissal of a patent infringement complaint and an award of attorneys’ fees, the US Court of Appeals for the Federal Circuit reiterated that a nonpracticing entity (NPE) seeking pre-suit damages cannot disregard its licensees’ obligations under the patent marking statute, and that a pattern of abusive litigation conduct supports an exceptional case finding under 35 U.S.C. § 285. VDPP, LLC v. Volkswagen Group of America, Inc., Case No. 24-2226 (Fed. Cir. Aug. 19, 2026) (Moore, Lourie, Cunningham, JJ.)

VDPP, an NPE, sued an auto manufacturer for infringement of a patent directed to electrically controlled spectacles. The district court dismissed the complaint under Rule 12(b)(6) and denied leave to amend as futile. Because VDPP sought pre-suit damages, it was required to plead compliance with 35 U.S.C. § 287(a), including compliance by its licensees.

VDPP had entered into 11 settlement agreements that included patent licenses, but its proposed amended complaint did not allege that any licensee had marked its products. Instead, VDPP relied on its status as an NPE and asserted that it had no products of its own to mark. VDPP appealed the district court’s dismissal and fee award.

The Federal Circuit affirmed. Although a patentee that does not make or sell patented products may not have products of its own to mark, its licensees remain subject to § 287’s marking requirements. The Court rejected VDPP’s attempt to distinguish licenses granted through settlement agreements, explaining that a settlement license is no different for marking purposes from any other patent license. The Court noted that all 11 settlement agreements were structured as licenses and that one expressly stated that the licensee had no obligation to mark. Because VDPP could not plausibly allege that it made reasonable efforts to ensure compliance by its licensees, the Court affirmed the denial of leave to amend as futile.

The Federal Circuit also affirmed the district court’s exceptional case determination and fee award under § 285. The district court relied on several aspects of VDPP’s litigation conduct, including seeking future damages and injunctive relief on an expired patent, failing to disclose relevant settlement agreements despite being reminded of them, and advancing positions the district court characterized as frivolous.

The Federal Circuit rejected VDPP’s argument that conduct must independently satisfy Rule 11 before it may support an exceptional case finding. It also concluded that the district court properly considered VDPP’s broader pattern of filing patent infringement suits followed by low-value settlement demands, noting that such a pattern is relevant to an exceptional case determination where adequate evidence of an abusive litigation strategy is presented.

The Federal Circuit dismissed the appeal as to sanctions imposed on VDPP’s counsel for lack of jurisdiction. VDPP’s counsel’s notice of appeal listed only VDPP as the appellant, and the counsel’s name appeared only incidentally within a description of the orders being appealed. Corrected notices filed more than 90 days after entry of the orders came too late. The Court also rejected VDPP’s argument that it had standing to contest its own counsel’s [...]

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Safety-enhancing color is functional, not protectable as trademark

by | Aug 13, 2026 |

The US Court of Appeals for the Eighth Circuit affirmed cancellation of a trademark covering chartreuse-colored water hoses, finding that the color was functional because it improved visibility and therefore enhanced safety. The Court also affirmed a $3 million attorneys’ fee award based on the trademark owner’s lack of candor before the United States Patent & Trademark Office (USPTO), litigation conduct, and continued reliance on an incorrect interpretation of the functionality standard. Weems Industries, Inc. d/b/a Legacy Manufacturing Co. v. Teknor Apex Co., Case No. 25-2956 (8th Cir. July 30, 2026) (Colloton, Arnold, Grasz, JJ.)

Weems Industries sued competing water hose manufacturer Teknor Apex for trademark infringement and other claims. Weems asserted a federally registered trademark covering the chartreuse color used on its water hoses. Teknor countered that the color was functional and sought cancellation of the registration. Teknor also requested attorneys’ fees.

The district court agreed with Teknor, finding that chartreuse served a functional purpose because the bright color made hoses more visible against dark grass and therefore improved product safety. The district court also concluded that Weems had not established acquired distinctiveness in the color. It cancelled the registration and awarded Teknor approximately $3 million in attorneys’ fees. The district court based the fee award on three categories of conduct: Weems’ lack of candor before the USPTO, its conduct during the litigation and trial, and its continued reliance on an incorrect interpretation of trademark functionality. Weems appealed.

The Eighth Circuit reviewed the district court’s functionality determination for clear error. A product feature is functional and therefore not subject to trademark protection if it is essential to the product’s use or affects the product’s cost or quality. The Court explained that a feature that improves product safety may affect product quality and therefore be functional.

The record contained substantial evidence supporting the district court’s finding that chartreuse improved hose visibility. Weems’ own promotional materials described the visibility and safety benefits of the color. The record also included patent-related materials describing the utility of chartreuse and expert testimony addressing the color’s visibility.

The Eighth Circuit rejected Weems’ argument that a feature is functional only if it improves the mechanical operation of the product. Functionality, the Court explained, is not limited to whether a feature makes a product operate better. A feature that improves safety can also affect product quality and therefore fall within the functionality doctrine.

The Court also rejected Weems’ argument that chartreuse should remain protectable because Teknor could have selected a different highly visible color for its hoses. The availability of alternative colors did not require a competitor to design around a functional safety feature. Because the Court affirmed the finding that chartreuse was functional, it did not need to address whether the color had acquired distinctiveness.

The Eighth Circuit next considered the attorneys’ fee award. The Lanham Act permits fee awards in “exceptional cases,” which courts evaluate based on the totality of the circumstances. A case may be exceptional because of the substantive weakness of a party’s [...]

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Invalidity alone does not render a case exceptional

by | May 28, 2026 |

Addressing fee shifting under 35 U.S.C. § 285 and sanctions under 28 U.S.C. § 1927, the US Court of Appeals for the Federal Circuit affirmed in part and reversed in part a judgment dismissing a patent infringement complaint and awarding attorneys’ fees and costs, finding that the weakness of the plaintiff’s position, without more, did not justify a finding of exceptionality, and that counsel’s lack of diligence did not rise to the bad-faith conduct required for sanctions. mCom IP, LLC v. City National Bank of Florida, Case No. 24-2089 (Fed. Cir. May 15, 2026) (Dyk, Mayer, Taranto, JJ.)

mCom IP sued City National Bank of Florida in September 2023, asserting a patent directed to systems and methods for integrating financial institutions’ “e-banking touch points,” such as ATMs and online banking portals. Earlier that year, an inter partes review (IPR) initiated by Unified Patents resulted in all but four claims being found unpatentable as obvious under 35 U.S.C. § 103. mCom’s district court complaint asserted those four surviving claims.

The district court struck mCom’s initial complaint as a “shotgun pleading” and dismissed the amended complaint with prejudice for failure to state a claim. It also concluded that the asserted claims were invalid on the same obviousness grounds addressed in the IPR and awarded attorneys’ fees under § 285, finding the case exceptional, and imposed sanctions under § 1927 based on counsel’s litigation conduct. mCom appealed.

The Federal Circuit affirmed the dismissal but reversed the fee award and sanctions. The Court addressed two issues: whether the case was “exceptional” under § 285 and whether counsel had unreasonably and vexatiously multiplied the proceedings under § 1927.

Under § 285, a case is exceptional if it “stands out” based on the substantive strength of a party’s position or the unreasonable manner of litigation. The Federal Circuit rejected each basis relied on by the district court.

First, although the asserted claims were ultimately found invalid, the Federal Circuit emphasized that invalidity alone does not render a case exceptional. Rather, awarding fees requires a showing that the claims were “unusually or extraordinarily weak.” That standard was not met here where the asserted claims survived IPR and carried a presumption of validity, and where the burden of proof for invalidity in district court remains higher than in IPR.

Second, the Federal Circuit found that pleading deficiencies did not support exceptionality. The initial complaint’s defects were “purely formal,” and the amended complaint’s failure to state a claim, without more, did not render the overall litigation conduct unreasonable.

Third, the Federal Circuit rejected reliance on City National’s purported license defense, noting that no license had been established on the record.

Finally, the Federal Circuit found insufficient support for the contention that mCom pursued nuisance-value settlements, explaining that City National failed to provide evidence regarding settlement amounts or to tie prior litigation to the patent at issue.

The Federal Circuit also reversed the sanctions imposed under § 1927. Applying Eleventh Circuit law, the Federal Circuit explained that sanctions require conduct [...]

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No escape from fees and sanctions for reckless litigation conduct

by | Dec 4, 2025 |

The US Court of Appeals for the Federal Circuit affirmed attorneys’ fees awards against EscapeX IP, LLC, finding the case “exceptional” under 35 U.S.C. § 285, and upheld sanctions under 28 U.S.C. § 1927 based on counsel’s reckless litigation conduct. EscapeX IP, LLC v. Google LLC, Case No. 24-1201 (Fed. Cir. Nov. 25, 2025) (Taranto, Stoll, Stark, JJ.)

EscapeX brought suit against Google in the Western District of Texas, alleging that Google’s YouTube Music product infringed its patent directed to systems for generating artist-specified dynamic albums. After Google pointed out that the accused features were absent from YouTube Music and later demonstrated that the accused “Auto-Add” feature predated the patent’s priority date, EscapeX amended its complaint to list the correct product and refused to dismiss the case.

Shortly after EscapeX sued Google, its patent was invalidated under § 101 in a separate litigation. EscapeX did not appeal that ruling, and Google requested that EscapeX dismiss the case. In response, EscapeX filed what it characterized as a “joint stipulation of dismissal,” which Google contested because it had not agreed to such a filing. Google moved for attorneys’ fees under § 285, arguing that EscapeX had filed frivolous claims and unreasonably prolonged the litigation. The district court agreed, awarding Google its fees.

EscapeX then filed a Rule 59(e) motion to amend the judgment, attaching declarations from its CEO and an engineer to show pre-suit diligence. The district court denied the motion, finding that the evidence was not “newly discovered” and the motion was frivolous. Google successfully sought additional fees and sanctions under § 1927, resulting in an additional $63,525 jointly and severally against EscapeX and its attorneys. EscapeX appealed.

The Federal Circuit affirmed the district court decisions and found no abuse of discretion. The Court concluded that the record supported the finding that EscapeX had not conducted any pre-suit investigation and that the case was “frivolous from the start.” This conclusion was also supported by Google’s early, detailed warnings against filing the suit and EscapeX’s general nonresponsiveness.

Regarding the Rule 59(e) motion, the Federal Circuit agreed that the declarations were not “newly discovered evidence” because they were always within EscapeX’s control and knowledge. The Court rejected arguments of “manifest injustice,” which were not raised in district court and had no merit.

Finally, the Federal Circuit affirmed the sanctions under § 1927, finding that EscapeX’s counsel acted recklessly by filing a frivolous motion that multiplied proceedings. The Court noted that zealous advocacy does not excuse filing baseless motions. The Court upheld Google’s fees and sanctions in their entirety, with costs related to the appeal also awarded to Google.



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Ain’t worried about local rules: Scope of sound recording protection is narrow

by | Oct 30, 2025 |

Addressing for the first time what evidence is required to prove infringement of a sound recording copyright, the US Court of Appeals for the Seventh Circuit affirmed a district court’s decision to grant summary judgment to the defendant, finding that the plaintiff’s copyright registration of his work as a sound recording required proof of actual sampling to establish infringement. Richardson v. Kharbouch, Case No. 24-1119 (7th Cir. Oct. 16, 2025) (Brennan, Jackson-Akiwumi, Pryor, JJ.)

In 2012, then-16-year-old Eddie Richardson created a hip-hop beat titled “*Hood* Pushin Weight” (HPW). Months later, while listening to the hit song “Ain’t Worried About Nothin” (AWAN) by Karim Kharbouch, who is better known by his stage name French Montana, Richardson believed that he recognized his own HPW beat. The next day, Richardson registered a sound recording copyright with the US Copyright Office. Richardson did not obtain a copyright registration for his musical composition. After Richardson’s attempts to negotiate with French Montana and his representatives failed, Richardson filed a copyright infringement lawsuit.

The district court conducted two rounds of summary judgment briefing. In both rounds, neither party complied with a local rule that required each side to respond to the opposing party’s statement of material facts. The court, in its discretion, declined to deem the unopposed facts admitted. After French Montana’s reply brief in the first round included a “passing comment” on the nature of Richardson’s copyright, raising a potentially dispositive issue, the district court ordered supplemental briefing.

In the second round of briefing, the district court determined that because Richardson had registered his copyright as a sound recording rather than a musical composition, he was required to show duplication or sampling, not mere imitation. Finding no such evidence, the court granted summary judgment in favor of French Montana. The district court then awarded costs to French Montana but denied attorneys’ fees. Richardson appealed the grant of summary judgment and the court’s decision not to enforce the local rules against French Montana while French Montana cross-appealed the denial of attorneys’ fees.

Richardson argued that the district court abused its discretion by failing to deem his unopposed factual statements admitted under the local rules. The Seventh Circuit found no abuse of discretion by the district court, reasoning that because neither party complied with the local rules, the district court acted appropriately in declining to enforce them against only one side.

The Seventh Circuit also affirmed the district court’s grant of summary judgment in favor of French Montana, explaining that “sound recording copyrights only protect those sounds that directly or indirectly recapture the actual sounds fixed in the recording from infringement.” Mere imitation, even if indistinguishable to the listener, is not infringement, and Richardson failed to present evidence of actual duplication of the sound recording.

Finally, the Seventh Circuit affirmed the district court’s denial of attorneys’ fees to French Montana. Although there is a “strong presumption in favor of awarding fees in copyright infringement cases,” the Seventh Circuit held that the district court properly applied the four-factor Fogerty [...]

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Failure to reassess subject matter eligibility after similar claims invalidated justifies attorneys’ fees

by | Oct 30, 2025 |

Following a dismissal on the pleadings, the US District Court for the Southern District of New York granted the defendant’s motion for attorneys’ fees under 35 U.S.C. § 285 after concluding that the asserted patent was objectively invalid under 35 U.S.C § 101. Linfo, LLC v. Aero Global, LLC, Case No. 24-cv-2952 (S.D.N.Y. Oct. 15, 2025).

Linfo sued Aero Global alleging infringement of a patent directed to a system with methods and a user interface for discovering and presenting information in text content with different view formats. The patented system would allow a user to sort through online hotel reviews, for example, by toggling a button to show only positive comments, or only comments related to room service.

One week after filing its complaint, Linfo proposed an early-stage settlement of $49,000, which Aero Global did not accept. Subsequently, in a separate case involving the same patent, another judge in the Southern District of New York found the patent invalid. After Aero notified the court of the decision, Linfo sought to dismiss the case without prejudice, and Aero opposed. Linfo then requested a stay pending appeal of the other’s judge’s decision, which the court denied. Linfo then contacted Aero to propose the parties “walk away to close the matter.” Aero responded that it would agree to dismissal if Linfo reimbursed Aero for its fees incurred. Linfo did not respond, after which the court concluded that Linfo was collaterally estopped from asserting infringement of the patent and granted Aero’s motion for judgment on the pleadings.

Aero thereafter sought attorneys’ fees under § 285, arguing that the asserted patent was objectively invalid under § 101. The district court agreed, finding that the litany of cases published after the Supreme Court’s 2014 Alice v. CLS decision should have made clear to Linfo and its counsel that the asserted patent was directed precisely to the kind of abstract concept that Alice deemed unpatentable. Linfo argued that since the patent was issued after the Alice decision, it was reasonable for Linfo to assume the patent examiner considered Alice as part of the USPTO’s decision-making process. The district court rejected this argument, finding no evidence that the USPTO evaluated whether the patent was directed to patent eligible subject matter and, more importantly, finding that numerous cases post-dating the patent’s issuance invalidated patents similar to Linfo’s patent.

Linfo argued that it was reasonable for it to continue the case because it received favorable claim construction rulings and litigated against other defendants that had not filed § 101 challenges. The court rejected this argument, explaining that judicial construction of a patent claim after a claim construction hearing says little about whether that claim is eligible under § 101, given that claim construction and patent eligibility are distinct inquiries.

The court considered Linfo’s and its attorney’s litigation history and found several indicia suggesting that Linfo and its counsel brought this case to induce settlement rather than to reach the merits. The court noted that Linfo had asserted the challenged patent [...]

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Prevailing party: Dismissal with prejudice will do it

by | Sep 18, 2025 |

The US Court of Appeals for the Federal Circuit found that a district court erred in denying fees and costs to the prevailing party (here, the defendant), but upheld the district court’s denial of Rule 11 sanctions. Future Link Sys., LLC v. Realtek Semiconductor Corp., Case Nos. 23-1056; -1057 (Fed. Cir. Sept. 9, 2025) (Stoll, Reyna, Bryson, JJ.)

Future Link sued Realtek for patent infringement in the Western District of Texas. Realtek challenged service and personal jurisdiction and subsequently moved for Rule 11 sanctions. During discovery, Future Link produced a licensing agreement with a third party, under which the third party had agreed to pay a lump sum if Future Link sued Realtek. Shortly afterward, Future Link entered into a separate licensing agreement with Realtek covering the accused products and voluntarily dismissed the case.

Realtek moved for attorneys’ fees under 35 U.S.C. § 285 and costs under Rule 54(d)(1), and asserted that Future Link had filed objectively baseless lawsuits. The district court denied Realtek’s motions for fees and sanctions, did not address the motion for costs, and converted Future Link’s voluntary dismissal to a dismissal with prejudice.

Fees and costs

To seek fees and costs, a party must qualify as “the prevailing party.” In reviewing the district court’s decision on fees and costs, the Federal Circuit addressed Realtek’s prevailing party status under both § 285 and Rule 54(d).

Applying de novo review, the Federal Circuit concluded that Realtek was the prevailing party, despite the voluntary dismissal, because the district court had converted that dismissal to one with prejudice. The Federal Circuit emphasized that prevailing party analysis turns on whether there has been a material alteration of the legal relationship between the parties. Citing its own precedent, the Court explained that a dismissal with prejudice constitutes such a change because it bars the plaintiff from reasserting the same claims against the same products.
The Court explained that a favorable ruling on the merits is not required. A defendant that successfully avoids liability, such as through dismissal with prejudice, can still be deemed the prevailing party.

Since the dismissal with prejudice prevented Future Link from reasserting its patent claims against the accused products, Realtek was the prevailing party. The Federal Circuit vacated the district court’s denial of attorneys’ fees under § 285 and remanded the issue for consideration of whether the case was exceptional and fees were warranted. It likewise remanded the Rule 54(d) costs issue for initial determination.

Rule 11 sanctions

The Federal Circuit affirmed the district court’s denial of Rule 11 sanctions. Realtek had argued that Future Link’s prefiling investigation was inadequate and that the lawsuit was improperly motivated by a third-party payment arrangement, making that arrangement the but-for cause of the lawsuit.

The Federal Circuit rejected both arguments. First, it found that Future Link’s pre-suit investigation met Rule 11 standards: Future Link obtained and analyzed three accused products, prepared claim charts comparing asserted patent claims to the accused products, and investigated relevant optional features that it reasonably believed [...]

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Wrestling with prevailing defendant’s post-trial fee request in copyright dispute

by | Aug 21, 2025 | ,

The US Court of Appeals for the Fifth Circuit affirmed a district court’s denial of attorneys’ fees to the defendant after it prevailed at trial in a copyright infringement suit, concluding that the district court adequately addressed the Supreme Court’s Fogarty factors and did not abuse its discretion. Booker T. Huffman v. Activision Publ’g, Inc., et al., Case No. 22-40072 (5th Cir. Aug. 6, 2025) (Richman, Elrod, Oldham, JJ.) (Oldham, J., dissenting) (nonprecedential).

Booker Huffman, a retired professional wrestler, alleged that Activision’s “Prophet” character in Call of Duty: Black Ops IV infringed his G.I. Bro comic book poster. The case proceeded to trial, and the jury returned a verdict in favor of Activision. Activision then sought attorneys’ fees under 17 U.S.C. § 505, arguing that Huffman’s claims were frivolous, objectively unreasonable, and brought in bad faith, citing a lack of supporting evidence and substantial proof of independent creation. The district court found that the claims involved unsettled areas of law and were neither frivolous nor objectively unreasonable. Applying the factors the Supreme Court outlined in Fogarty v. Fantasy (1994), the district court concluded that an award of attorneys’ fees was not warranted. Activision appealed.

Activision argued that the district court failed to follow Fifth Circuit precedent, which holds that fee awards are “the rule rather than the exception” for prevailing parties in copyright actions. Activision contended that Huffman’s claims were meritless due to a lack of evidence establishing access, striking similarity, or causation. The Fifth Circuit rejected these arguments, emphasizing that there is no automatic entitlement to fees and that the district court’s six-page Fogerty analysis was more thorough than in other cases in which the Fifth Circuit has sustained lower court fee decisions. The Fifth Circuit highlighted that the district court carefully analyzed whether Huffman’s claims were objectively unreasonable, noting that the case implicated areas of unsettled law. The panel emphasized the district court’s denial of Activision’s pretrial motions, the evidence supporting Huffman’s access and similarity, and the district court’s evaluation of the evidentiary record.

The Fifth Circuit also rejected Activision’s argument that the district court abused its discretion by failing to analyze each of the Fogerty factors separately, finding that the judge recited the parties’ arguments for the relevant factors and that it could be inferred that the district court did not find Activision’s arguments persuasive. Throughout its analysis, the Court emphasized that a district court’s attorneys’ fees decision is reviewed only for abuse of discretion and not to relitigate the merits.

Judge Oldham dissented, concluding that Huffman’s claims were “speculation piled on fantasy piled on a pipe dream” and that overwhelming evidence of independent creation made the suit clearly unreasonable. Judge Oldman would have awarded fees to compensate Activision for defending against what he characterized as a baseless $32 million claim and to deter similarly unmeritorious lawsuits in the future.



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