One of the hardest questions a lawyer gets from a client is also one of the most common: “Should I sue?” The answer may have surprisingly little to do with the merits of the potential action. No matter how good a legal claim may be, the likely outcome has to be discounted by the costs of securing it. Clients often point out that their legal rights are merely symbolic if they cannot be enforced. But when enforcement means going to court (or at least threatening it) the costs can be substantial. Litigation can be disruptive, unpredictable, expensive and even emotionally draining. If those costs are not offset by the probable award, what is the legal right really worth? Maybe not much.

Different areas of the law deal with this problem in different ways. In some cases, for example, the government may step in with regulation to protect rights that would be too expensive to enforce through private litigation. In others, class or collective actions can spread the costs of enforcement among multiple plaintiffs. But the intellectual property laws—including the copyright, patent and trademark acts—deal with the problem in another way: through fee shifting.¹

The Copyright Act, for example, grants courts the discretion to award full costs and reasonable attorney fees to the prevailing party. Courts addressing such fee applications must answer two related questions: Should fees be awarded, and if so, in what amount? The Act leaves it to the discretion of the court to figure out the answers to these questions that best serve the purposes of the Copyright Act based on the particular facts and economics of each case.