Are Pro Hac Vice Fees Recoverable Costs under 28 U.S.C. § 1920? — Circuit Split —Cost of Video May Be Taxed in Addition to Deposition Transcript If Reasonably Necessary — Uncertainty as to Witness Attendance at Trial Is Sufficient

Olesky v. Gen. Elec. Co., 2016 U.S. Dist. LEXIS 171505 (N.D. Ill. Dec. 12, 2016):

Plaintiff Henryk Oleksy ("Oleksy") sued Defendant General Electric Company ("GE") for patent infringement. On September 29, 2015, the presiding District Judge ruled that [*4]  GE did not infringe on Oleksy's patent and, consequently, granted summary judgment in its favor. [ECF Nos. 717, 718]. After that, GE filed a bill of costs seeking $153,700.73. [ECF No. 728-1]. Oleksy objected to the original bill of costs, and GE subsequently filed an amended bill of costs (the "Amended Bill of Costs") that slightly reduced the sought-after total to $150,564.09. GE's Amended Bill of Costs, [ECF No. 754-3]. Oleksy then filed a sur-reply arguing that GE should recover only $74,030.71. Plaintiff's Sur-Reply in Opposition to Defendant's Revised Bill of Costs ("Oleksy's Sur-Reply"), [ECF No. 766], at 15. After these filings, the District Judge referred GE's bill of costs to this Magistrate Judge. [ECF No. 767].

For the reasons stated below, the Court grants in part and denies in part the Amended Bill of Costs, and awards $94,813.95 in costs.

I. LEGAL STANDARD

Under Federal Rule of Civil Procedure 54(d), a court may award costs other than attorney's fees to a prevailing party as long as no federal statute, Federal Rule of Civil Procedure, or court order provides otherwise. Fed. R. Civ. P. 54(d)(1). To be awardable, a cost must satisfy two requirements. Majeske v. City of Chicago, 218 F.3d 816, 824 (7th Cir. 2000). It must be taxable under a federal statute. Republic Tobacco Co. v. N Atl. Trading Co., 481 F.3d 442, 450 (7th Cir. 2007). 28 U.S.C. § 1920, the relevant statute for this case, [*5]  enumerates six categories of taxable fees:

   (1) Fees of the clerk and marshal;

   (2) Fees for printed or electronically recorded transcripts necessarily obtained for use in the case;

   (3) Fees and disbursements for printing and witnesses;

   (4) Fees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case;

   (5) Docket fees under section 1923 of this title;

   (6) Compensation of court appointed experts, compensation of interpreters, and salaries, fees, expenses, and costs of special interpretation services under section 1828 of this title.

   28 U.S.C. § 1920; see also Massuda v. Panda Express, Inc., 2014 WL 148723, at *5 (N.D. Ill. Jan. 15, 2014).

A cost also must be "both reasonable and necessary to the litigation." Little v. Mitsubishi Motors N. Am., Inc., 514 F.3d 699, 702 (7th Cir. 2008); see also Majeske, 218 F.3d at 824. The burden of showing that a cost was necessarily incurred and reasonable falls on the prevailing party. Trustees of Chicago Plastering Inst. Pension Trust v. Cork Plastering Co., 570 F.3d 890, 906 (7th Cir. 2009). Although there is a strong presumption that costs will be awarded, that presumption does not relieve the prevailing party of this burden. Life Plans, Inc. v. Sec. Life of Denver Ins. Co., 52 F. Supp. 3d 893, 903 (N.D. Ill. 2014). Only after the prevailing party has satisfied its burden does the non-prevailing party "then bear[] the burden to affirmatively show that the taxed costs are not appropriate." Bonds v. Fizer, 69 F. Supp. 3d 799, 803 (N.D. Ill. 2014). Ultimately, a court has broad discretion when deciding whether to award costs, and the Seventh Circuit [*6]  gives "'virtually complete' deference" to a court's exercise of this discretion. In re Dairy Farmers of Am., Inc., 80 F. Supp. 3d 838, 854 (N.D. Ill. 2015) (quoting O'Regan v. Arbitration Forums, Inc., 246 F.3d 975, 989 (7th Cir. 2001)).

II. DISCUSSION

In the Amended Bill of Costs, GE breaks the costs that it seeks to recover into seven categories. The Court will address each in turn.

A. Fees of the Clerk: $0.00 Awarded of $250.00 Requested

In the Amended Bill of Costs, GE lists $250.00 as fees of the clerk. Amended Bill of Costs, [ECF No. 754-3], at 2. This amount is comprised of five payments of $50.00 to the Clerk of Court for the pro hac vice admission of five GE attorneys. [ECF No. 728-2]. GE contends that this expense is taxable under 28 U.S.C. § 1920(1). Oleksy objects to the entire $250.00 and asserts that § 1920(1) does not encompass pro hac vice admission fees.

Section 1920(1) does not "specifically" address the issue presented by the parties' disagreement. Knauff v. Dorel Juvenile Grp., Inc., 2010 WL 2545424, at *1 (W.D. Tex. June 21, 2010). Instead, it provides that "fees of the clerk" are taxable. 28 U.S.C. § 1920(1). A circuit split has developed over whether this general language permits the award of pro hac vice fees. Compare Kalitta Air L.L.C. v. Cent. Texas Airborne Sys. Inc., 741 F.3d 955, 958 (9th Cir. 2013) with Craftsmen Limousine, Inc. v. Ford Motor Co., 579 F.3d 894, 898 (8th Cir. 2009).

In the Seventh Circuit, there is at least some authority to support both sides of the split. A few district courts, with little or no analysis, have awarded pro hac vice fees. See, e.g., Horina v. City of Granite City, Illinois, 2007 WL 489212, at *2 (S.D. Ill. Feb. 9, 2007); Brita Wasser-Filter-Systeme GmbH v. Recovery Eng'g, Inc., 1999 WL 446830, at *3 (N.D. Ill. June 24, 1999). In one case, the court of appeals affirmed [*7]  without any explanation such an award. United States v. Emergency Med. Associates of Illinois, Inc., 436 F.3d 726, 730 (7th Cir. 2006). The weight of authority in this Circuit, however, indicates that courts normally decline to award pro hac vice fees. See, e.g., Endotach LLC v. Cook Med. LLC, 2016 WL 912681, at *2 (S.D. Ind. Mar. 10, 2016); SP Techs., LLC v. Garmin Int'l, Inc., 2014 WL 300987, at *1 (N.D. Ill. Jan. 10, 2014); Local 881 United Food & Commercial Workers Union v. Food Club of Indiana, 2011 WL 3501721, at *3 (N.D. Ind. Aug. 10, 2011); Nilssen v. Osram Sylvania, Inc., 2007 WL 257711, at *1 (N.D. Ill. Jan. 23, 2007), aff'd, 528 F.3d 1352 (Fed. Cir. 2008); Adler v. B.C. Ziegler & Co., 2006 WL 3771825, at *1 (E.D. Wis. Dec. 21, 2006); Abrams v. Van Kampen Funds, Inc., 2006 WL 452419, at *5 (N.D. Ill. Feb. 21, 2006); Liquid Dynamics Corp. v. Vaughan Co., 2002 WL 31207212, at *1 (N.D. Ill. Oct. 2, 2002); cf. Brown v. Colgate-Palmolive Co., 2006 WL 3197455, at *2 (S.D. Ind. May 17, 2006). This also is the practice of "the majority of courts" throughout the country. Awad v. Ziriax, 2014 WL 1572804, at *1 n.2 (W.D. Okla. Apr. 17, 2014).

Consistent with this weight of authority, the Court will not award GE its pro hac vice fees. Therefore, the Court will not award any of the $250.00 that GE lists as fees of the clerk in the Amended Bill of Costs.

 

B. Fees for Service of Summons and Subpoenas: $655.00 Awarded of $2,108.00 Requested

In the Amended Bill of Costs, GE lists $2,108.00 as fees for service of summons and subpoenas. Amended Bill of Costs, [ECF No. 754-3], at 2. The parties address this amount in two parts.

***

3. Deposition Transcripts, Video, and Exhibits: $45,532.16 Awarded of $60,168.75 Requested

GE seeks to recover $60,168.75 that it spent for deposition transcripts, videotapes, and exhibits. GE's Reply, [ECF No. 754], at 14. Olesky argues that GE can recover only $24,688.15 of this amount. Oleksy' Sur-Reply, [ECF No. 766], at 14. The parties break these costs into several categories.

 

i. Deposition Videotapes and DVDs: $20,762.06 Awarded of $20,762.06 Requested

GE seeks to recover $20,762.06 for the videotaping of depositions. GE's Reply, [ECF No. 754], at 14; see [ECF No. 754-5], at 9-12 (listing the objected-to fees). Oleksy argues that GE cannot recover any of this amount. Oleksy' Sur-Reply, [ECF No. 766], at 14.

Oleksy contends that there is a "general rule" in this district that a party cannot recover the cost of videotaping a deposition when it also purchases a transcript of the deposition. Id. The Seventh Circuit, though, has held that "the costs of both video-recording and stenographic transcription" may "be taxed to the losing party." Little v. Mitsubishi Motors N. Am., Inc., 514 F.3d 699, 702 (7th Cir. 2008); see also Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 2016 WL 316865, at *2 (N.D. Ill. Jan. 26, 2016); In re Text Messaging Antitrust Litig., 2014 WL 4343286, at *6 (N.D. Ill. Sept. 2, 2014). "[T]he standard is whether it was reasonably necessary for counsel to obtain both." Text Messaging, 2014 WL 4343286, at *6. Reasonableness may be established where there is uncertainty [*18]  as to whether a witness will appear at trial. See Wells v. Johnson, 2012 WL 3245955, at *3 (N.D. Ill. Aug. 6, 2012) ("A video deposition of Ellerbe was reasonably necessary, given the parties' uncertainty as to whether she would appear to testify at trial."); Fairley v. Andrews, 2008 WL 961592, at *11 (N.D. Ill. Apr. 8, 2008) (awarding videotaping costs when "there was a reasonable possibility that [non-party deponents] would be unavailable for trial"); see also Corcoran v. City of Chicago, 2015 WL 5445694, at *7 (N.D. Ill. Sept. 15, 2015) (finding videotaping the deposition of a former party employee who potentially was a hostile witness to be reasonable). Under this standard, videotaping a deposition may be reasonable when a witness is outside the court's subpoena power, although this factor alone may not be dispositive. See, e.g., Kellogg, 2016 WL 316865, at *2 (finding that videotaping a deponent outside of the court's subpoena power was reasonable); Merix Pharm. Corp. v. Clinical Supplies Mgmt., Inc., 106 F. Supp. 3d 927, 937 (N.D. Ill. 2015), appeal dismissed (Sept. 21, 2015) (same).

In this case, GE represents that many of the videotaped deponents were either Oleksy's witnesses or third party witnesses who, in both instances, were outside GE's custody and control. The Court understands this to mean, among other things, that the witnesses also were out of the reach of the Court's subpoena power. Oleksy does not present a contrary set of facts. Thus, the Court is satisfied that videotaping such witnesses' [*19]  depositions was reasonable.

According to GE, all of the other witnesses for whom GE is seeking to recover videotaping fees were deposed by Oleksy and Oleksy obtained videotapes of the depositions. Again, Oleksy does not dispute these facts. In such a situation, GE's decision to obtain video-recordings was not unreasonable. See Kellogg, 2016 WL 316865, at *2 ("[I]t was . . . reasonable and necessary for Kellogg to procure the video recordings . . . because IGB's counsel ordered these depositions and obtained video recordings."); Dairy Farmers, 80 F. Supp. 3d at 856 ("It would be unfair to allow Plaintiffs access to video recordings of transcripts for possible use at trial and to deny Schreiber the right to obtain those same video tapes (and, of course, to tax the Plaintiffs for them upon prevailing)."); Top Tobacco, L.P. v. N. Atl. Operating Co., 2007 WL 1149220, at *7 (N.D. Ill. Apr. 17, 2007) ("Knowing that its opponent possessed video tapes of these depositions, it was reasonable and necessary for North Atlantic to obtain copies.").

For all of these reasons, the Court awards $20,762.06 for videotaping fees.

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