Voluntary Dismissals and Attorney Fees
Patent – Patently-O 2024-12-30
Summary:
by Dennis Crouch
The Copyright Act and the Patent Act each include an attorney fee provision — permitting the district court to award “a reasonable attorney’s fee to the prevailing party.” Because of similarities in the provisions, they tend to be interpreted together — at least with regard to what qualifies as a “prevailing party” under the statute. (Unlike in copyright law, the patent law limits fees to “exceptional case[s]”).
On the Copyright side, there is a growing circuit split on the issue of whether defendants can recover attorney’s fees after a plaintiff voluntarily dismisses under Rule 41(a)(1). That rule permits for voluntary dismissal and does not require a court order. Affordable Aerial Photography, Inc. v. Property Matters USA, LLC, 108 F.4th 1358 (11th Cir. 2024), the 11th Circuit held that “some judicial action rejecting or rebuffing a plaintiff’s claim is necessary to endow a defendant with prevailing party status.” In a parallel decision, the 11th Circuit clarified that a plainttif’s voluntary dismissal does not create a prevailing party status even if made “with prejudice.” Affordable Aerial Photography, Inc. v. Reyes, No. 23-12051, 2024 WL 4024619 (11th Cir. Sep. 3, 2024).