United States District Court, N.D. Illinois, Eastern Division
July 16, 2004.
ZENITH ELECTRONICS CORPORATION, Plaintiff/Counter-Defendant,
WH-TV BROADCASTING CORPORATION, Defendant/Counter-Plaintiff.
The opinion of the court was delivered by: GEORGE LINDBERG, Senior District Judge
MEMORANDUM OPINION AND ORDER
Before the court are Zenith Electronics Corporation's
("Zenith") and WH-TV Broadcasting Corporation's ("WH-TV") motions
to review costs taxed in favor of General Instrument Corporation
("GI") and Motorola, Inc. ("Motorola"). For the reasons stated
below, WH-TV's motion to vacate the costs taxed against it is
granted in part and denied in part, and Zenith's motion is
In 1999 and 2000, Zenith sold digital television equipment to
WH-TV. On July 17, 2000, Zenith sold to GI the Zenith division
that was responsible for manufacturing the equipment. Under the
agreement governing the sale, GI agreed to indemnify Zenith from
all losses relating to certain assumed liabilities.
On June 11, 2001, Zenith brought this breach of contract action
against WH-TV, alleging that WH-TV failed to pay Zenith for the
equipment. WH-TV counterclaimed, alleging that the equipment was
defective and did not conform to the promises Zenith had made.
WH-TV later added GI and Motorola (GI's parent company) as
third-party defendants. Zenith filed a crossclaim for
indemnification against GI, in the event that Zenith was held
liable to WH-TV. On March 12, 2004, this court entered judgment against WH-TV
and in favor of GI and Motorola on WH-TV's Second Amended
Third-Party Complaint. The same day, the court entered judgment
against Zenith and in favor of GI on Zenith's cross-claim for
indemnification.*fn1 GI and Motorola filed a bill of costs,
requesting that the Clerk of Court tax costs in the amount of
$357,618.82 jointly and severally against WH-TV and Zenith.
Pursuant to Federal Rule of Civil Procedure 54(d)(1), the clerk
taxed these costs. WH-TV and Zenith each filed a timely motion
asking the court to review this action by the clerk.
II. Legal Standard
Federal Rule of Civil Procedure 54(d)(1) provides that "costs
other than attorneys' fees shall be allowed as of course to the
prevailing party" unless a statute, federal rule of civil
procedure, or the court otherwise directs. Recoverable costs are
listed in 28 U.S.C. § 1920:
(1) Fees of the clerk and marshal;
(2) Fees of the court reporter for all or any part of
the stenographic transcript necessarily obtained for
use in the case;
(3) Fees and disbursements for printing and
(4) Fees for exemplification and copies of papers
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.
Courts may not award costs not authorized by statute. Barber v.
Ruth, 7 F.3d 636
, 644 (7th Cir. 1993); Northbrook Excess &
Surplus Ins. Co. v. Proctor & Gamble Co., 924 F.2d 633
(7th Cir. 1991). III. Zenith's Objections to GI's and Motorola's Bill of
The court first considers Zenith's argument that GI's and
Motorola's claim for costs against Zenith should be denied in its
entirety because GI and Motorola failed to segregate the costs
attributable to GI's defense of Zenith's indemnification claims.
GI and Motorola collectively seek to impose costs jointly and
severally against WH-TV and Zenith, without specifying which of
those costs GI incurred defending against Zenith's claims. Zenith
asserted claims only against GI in this litigation, and asserted
no claims against Motorola. Therefore, only GI was a prevailing
party with respect to Zenith's claims against it, and Motorola
cannot recover costs from Zenith, as it is attempting to do here.
Since GI and Motorola have failed to indicate which costs GI
incurred defending against Zenith's claims, the court will deny
their claim for costs against Zenith in its entirety.
Moreover, joint and several liability would be inappropriate
here, even if it were clear which costs were incurred by GI and
which by Motorola. GI and Motorola fail to differentiate between
which costs were incurred defending against Zenith's claims, and
which costs were incurred defending against WH-TV's claims. GI
and Motorola argue that this is appropriate because their costs
related to matters applicable to both Zenith's and WH-TV's
claims. GI and Motorola explain that since Zenith sought
indemnification from GI for WH-TV's claims against Zenith in this
action, and since WH-TV asserted claims against Zenith for the
same failings for which it sought compensation from GI and
Motorola, Zenith's claims against GI were essentially the same as
WH-TV's claims against GI and Motorola. Accordingly, argue GI and
Motorola, any documents relevant to their defense against WH-TV's
claims were also relevant to GI's defense against Zenith's
claims. Generally, liability for costs is joint and several when there
are multiple parties on the non-prevailing side. See White v.
Sundstrand Corp., 256 F.3d 580, 586-87 (7th Cir. 2001).
However, joint and several liability for costs is not appropriate
where the claims by the non-prevailing parties against the
prevailing party were different in kind. See In re Paoli R.R.
Yard PCB Litig., 221 F.3d 449, 471 (3d Cir. 2000).
Here, Zenith's indemnification claims raised the issue of which
of Zenith's obligations GI assumed under the agreement governing
the asset sale. By contrast, WH-TV's complaint against GI and
Motorola included promissory and equitable estoppel claims
relating to promises Motorola made to WH-TV and work that
Motorola performed after the asset sale. Accordingly, the defense
against Zenith's claims would not have required the same
discovery needed to defend against WH-TV's claims. In addition,
although the court cannot determine which costs GI and Motorola
would have incurred defending against WH-TV's claims, the court's
experience with this case leads the court to conclude that those
costs would have been greater than the costs GI incurred
defending against Zenith's indemnification claims.
The costs of defending against Zenith's claims should have been
segregated from the costs of defending against WH-TV's
claims.*fn2 Cf. Concord Boat Corp. v. Brunswick Corp.,
309 F.3d 494, 497 (8th Cir. 2002) (joint and several
liability appropriate where non-prevailing parties were
represented by same counsel, had common theories of liability,
and sought the same discovery); Petit v. City of Chicago, No.
90 C 4984, 2003 WL 22339277, at *3 (N.D. Ill. Oct. 10, 2003) (joint and several liability appropriate where
non-prevailing parties were represented by same counsel, and
almost all of costs incurred related to general matters
applicable to each plaintiff's claim). Since GI and Motorola did
not differentiate between the costs incurred defending against
Zenith's claims, and those incurred defending against WH-TV's
claims, joint and several liability for costs would be
IV. WH-TV's Objections to GI's and Motorola's Bill of Costs
A. Transcripts and Deposition Exhibits (Bill of Costs at 1-9)
GI and Motorola claim hearing transcript costs of $1,297.12.
WH-TV argues that GI and Motorola improperly seek to recover the
higher cost of transcripts ordered on an expedited basis, and
that they should be allowed to recover only the cost of
transcripts at the regular, non-expedited rate. GI and Motorola
respond that WH-TV ordered many of the transcripts on an
expedited basis, and that GI and Motorola merely ordered the
transcripts on the same terms. GI and Motorola argue that they
would have been prejudiced if WH-TV and Zenith had had the
benefit of expedited transcripts and GI and Motorola had not, and
note in general fashion that the parties appeared in court nearly
every week, sometimes on multiple motions, and that briefing
schedules were tight.
Local Rule 54.1(b) provides that "the costs of the transcript
or deposition shall not exceed the regular copy rate as
established by the Judicial Conference of the United States and
in effect at the time the transcript or deposition was filed
unless some other rate was previously provided for by order of
court." Prior to February 28, 2003, the Judicial Conference rate
allowed for original transcripts was $3.00 per page, and the rate
allowed for copies was $0.75 per page. See Cengr v. Fusibond
Piping Sys., Inc., 135 F.3d 445, 455 (7th Cir. 1998). The
rate allowed for expedited original transcripts was $4.00 per page. Id. Since
February 28, 2003, the Judicial Conference rate allowed for
original transcripts has been $3.30 per page, and the rate
allowed for copies has been $0.83 per page. Angevine v.
WaterSaver Faucet Co., No. 02 C 8114, 2003 WL 23019165, at *3
(N.D. Ill. Dec. 23, 2003). The rate allowed for expedited
original transcripts has been $4.40 per page. Herman v. Central
States, S.E. & S.W. Areas Pension Fund, No. 03 C 1010, 2003 WL
22955996, at *1 (N.D. Ill. Dec. 15, 2003).
The court is not persuaded by GI's and Motorola's argument that
they should be entitled to costs at the expedited rate merely
because WH-TV and Zenith were spending that much as well. While
expedited transcripts may well have been justified in some
instances, given the pace of the litigation, GI and Motorola do
not explain specifically why each of the expedited transcripts
was necessary. Accordingly, GI and Motorola will be awarded only
the standard rate for the hearing transcripts, and not the
GI and Motorola claim deposition transcript costs of
$11,309.73. As with the hearing transcripts, many of these
transcripts were ordered on an expedited basis. GI and Motorola
explain that an expedited transcript of WH-TV's expert, Merrill
Weiss, was necessary based on the short amount of time between
Weiss's deposition and the deadline for submit GI's and
Motorola's expert report. GI and Motorola explain in conclusory
fashion that the other expedited transcripts were "necessitated
by the fast pace of the litigation." The court will award GI and
Motorola the expedited rate permitted by the Judicial Conference
for the Weiss transcript. However, the court will award only the
standard rate for transcripts other than the Weiss transcript.
WH-TV argues that GI and Motorola claim unreasonable photocopy
amounts for copying deposition exhibits. Motorola paid $0.40 per page for some of
these copies, $0.30 per page for others, and $0.16 per page for
others. Copy rates up to $0.20 per page have been found to be
reasonable. See, e.g., Santiago v. Orland Park Motor Cars,
Inc., No. 01 C 8293, 2004 WL 434208, at *4 (N.D. Ill. Feb. 18,
2004); Hanson v. Prairie Material Sales, Inc., No. 00 C 1574,
2002 WL 58791, at *2 (N.D. Ill. Jan. 16, 2002). GI and Motorola
do not cite any authority that finds copy rates exceeding $0.20
per page to be reasonable. Accordingly, the claimed amounts in
excess of $0.20 per page must be reduced to $0.20 per page.
B. Memoranda and Motions Submitted to the Court (Bill of Costs
WH-TV objects to GI's and Motorola's claim for costs of copies
for their own use of memoranda and motions submitted to the
court. A party may only recover the cost of copies of such
documents provided to the court and opposing counsel; it may not
recover the cost of copies made for its own use. Weiland v.
Linear Constr., Ltd., No. 00 C 6172, 2004 WL 783097, at *2 (N.D.
Ill. Jan. 8, 2004); see also Haroco, Inc. v. American Nat'l
Bank & Trust Co., 38 F.3d 1429, 1441 (7th Cir. 1994). The
court will award copying costs for only three copies of documents
filed with the court: one for the court, one for WH-TV, and one
WH-TV argues that the court should disallow all copying costs
relating to GI's and Motorola's motions for summary judgment
filed on February 28, 2003, on the basis that those motions were
"spurious." On February 26, 2003, the court set a schedule for
filing and briefing motions for summary judgment relating to
claims against GI and Motorola. Under that schedule, the deadline
for filing such motions was April 30, 2003. WH-TV argues that GI
and Motorola filed their motions "in direct contravention of a
court order," by filing them prior to the deadline. This argument
is misplaced. GI and Motorola were free to file their motions at
any time up to the deadline. While their strategy to file their motions early proved
misguided, since the court declined to give them the expedited
briefing schedule and ruling they sought, and while GI and
Motorola eventually filed another motion for summary judgment on
the court's deadline, the court cannot say that this strategy
constituted misconduct. See Congregation of the Passion v.
Touche, Ross & Co., 854 F.2d 219, 222 (7th Cir. 1988)
("Generally, only misconduct by the prevailing party worthy of a
penalty . . . or the losing party's inability to pay will suffice
to justify denying costs."). These costs will be allowed.
C. Pretrial Order Drafts (Bill of Costs at 17-18, 20-21)
GI and Motorola claim costs for copies of its witness and
exhibit lists, and its objections to those of WH-TV and Zenith,
which were circulated among the parties during the preparation of
the final pretrial order. WH-TV argues that such costs are not
recoverable because the copies were drafts that were not
submitted to the court. These costs will be allowed; GI and
Motorola were required to exchange copies of documents with WH-TV
and Zenith in the course of preparing the pretrial order. See
LR 16.1 (Standing Order Establishing Pretrial Procedure).
However, the court agrees with WH-TV that GI and Motorola have
not adequately described copies denoted "Portions of the Final
Pre-Trial Order" (Bill of Costs at 20-21) to allow the court to
determine whether they were reasonably necessary for use in the
case. The costs of these copies will not be allowed.
Finally, GI and Motorola claim costs for four copies of the
final pretrial order. Since Zenith was charged with submitting
the final version of the pretrial order to the court, GI and
Motorola can recover only the cost of one copy each for their own
use. D. Production of Paper Documents (Bill of Costs at 23-27)
GI and Motorola seek reimbursement for costs incurred copying
and numbering paper documents, which was done to enable GI and
Motorola to review the documents prior to producing the
responsive, non-privileged documents.*fn3 WH-TV argues that
such costs are not recoverable because the copying and numbering
was done merely for GI's and Motorola's convenience. This court
has previously stated that although making an additional copy of
documents for a party's own use may be convenient, and that
although Bates numbering may be useful for organizing large
volumes of documents, "there is no provision in the statute for
recovering the expense of organizing documents in a party's case
in general or of Bates numbering in particular." See Baxter
Int'l v. McGaw, Inc., No. 95 C 2723, 1998 WL 102668, at *3 (N.D.
Ill. Mar. 3, 1998). The cost of the copies made for GI and
Motorola, and the cost of Bates numbering will not be
WH-TV argues that the costs GI and Motorola incurred redacting
documents are not recoverable under 28 U.S.C. § 1920. GI and
Motorola do not respond to this argument. The court agrees with
WH-TV that because redaction is typically a task performed by an
attorney or paralegal, costs incurred redacting documents are
attorney's fees, and not costs recoverable under Section 1920.
Accordingly, these redaction costs will not be allowed.
E. Pleading Books (Bill of Costs at 23)
GI and Motorola claim $1,036.17 in costs paid to WH-TV to copy
WH-TV's set of documents filed with the court before GI and
Motorola entered the case. WH-TV argues that the cost of such copies is not recoverable because the documents were
not necessary for the presentation of evidence to the court,
citing McIlveen v. Stone Container Corp., 910 F.2d 1581,
(7th Cir. 1990).
The court finds McIlveen to be distinguishable from the
present case on this issue. In McIlveen, the Seventh Circuit
affirmed the district court's determination that money the
defendant spent to copy court filings was not recoverable, on the
basis that those copies were not necessary for use in presenting
evidence to the court. McIlveen, 910 F.2d at 1584. However,
McIlveen does not change prior authority that the "underlying
documents need not be introduced at trial in order for the cost
of copying them to be recoverable," as stated in Illinois v.
Sangamo Constr. Co., 657 F.2d 855, 867 (7th Cir. 1981).
Unlike in McIlveen, here GI and Motorola are seeking to recover
the costs of copies of documents filed with the court before they
entered the case. While the defendant in McIlveen was a party
in the case from the beginning, and therefore already would have
been served with the court documents it later copied, GI and
Motorola were not. The court concludes that the documents filed
with the court before GI and Motorola became parties were
necessarily obtained for use in the case. GI and Motorola will be
allowed to recover the cost of these copies.
F. Production of Documents Stored in Electronic Format
1. Printing electronic documents (Bill of Costs at 23)
GI and Motorola seek to recover $2,088.72 in costs incurred
printing documents stored on computer disks, for the purpose of
enabling GI and Motorola to review and produce those documents.
GI and Motorola do not assert that these documents could not be
produced in their original electronic form. Printing the
documents was done for GI's and Motorola's convenience, and will not be recoverable.
2. Computer time (Bill of Costs at 23)
GI and Motorola seek to recover $1,175.00 for "computer time."
In support of this claim, GI and Motorola cite Martin v. United
States, 931 F.2d 453 (7th Cir. 1991). Martin is not
applicable here, however, since that case dealt with the recovery
of costs under Federal Rule of Appellate Procedure 39(c).
Expenditures for computer time are not provided for in
28 U.S.C. § 1920, and cannot be recovered.
3. Computer consultant costs for searching and printing Lotus
Notes disks (Bill of Costs at 28)
GI and Motorola seek to recover $2,768.72 in costs incurred for
a computer consultant to "search for, and print, potentially
responsive documents on 15 computer disks containing voluminous
but archaic Lotus Notes files copied from the computer server
hard drive used by Zenith. . . ." The cost of a computer
consultant is not listed as a recoverable expense under Section
1920. Nor can the cost of the consultant's review for responsive
documents be considered part of the cost of reproducing
documents, as GI and Motorola suggest. See Stark v. PPM Am.,
Inc., No. 01 C 1494, 2003 WL 21223268, at *8 (N.D. Ill. May 23,
2003), aff'd, 354 F.3d 666 (7th Cir. 2004) (rejecting
request for cost for outside vendor hired to process e-mails "as
this expense cannot be read into the statute."). Conducting such
a review is the kind of work that is typically performed by
attorneys, and thus costs incurred in doing so are attorney's
fees, and not costs recoverable under Section 1920. Moreover,
while the court can imagine that there may be circumstances in
which it would be necessary to print documents that cannot be
produced in their original electronic form, GI and Motorola do
not explain why printing was necessary in this case, or indicate what portion of the computer consultant's fees were
incurred printing the documents. The $2,768.72 in costs incurred
for a computer consultant will not be recoverable.
4. Costs relating to documents on nineteen computer disks
compiled by WH-TV's computer consultants (Bill of Costs at
On December 11, 2002, this court issued an order permitting
WH-TV to engage a consultant to examine Motorola's computer
system for files relating to Zenith and WH-TV. WH-TV's
consultant, Computer Forensics, prepared a protocol to govern how
it would conduct its examination. That protocol provided that
Computer Forensics would supply an electronic copy of the files
it retrieved to counsel for Motorola. Motorola's counsel would
review the data for privilege, and provide Computer Forensics
with a list of file names to be redacted. Computer Forensics
would then copy the files to CD-ROMs or DVDs, redacting
privileged documents, and then would ship the CD-ROMs or DVDs to
Motorola objected to certain elements of Computer Forensics'
protocol, and moved for a protective order that would govern the
examination in a manner that Motorola preferred. Motorola's
motion did not object to the provision in the protocol that the
files would be provided to WH-TV in electronic form, and did not
propose that Motorola would print the files. WH-TV moved to
compel Motorola's cooperation under the terms of Computer
Forensics' protocol. On February 19, 2003, this court granted
WH-TV's motion to compel, and invited counsel to file an
emergency motion if problems arose under the protocol.
According to GI and Motorola, in April and May 2003, Computer
Forensics provided nineteen computer disks containing the results
of its review to GI and Motorola. GI and Motorola then engaged a
service to print and number the documents contained on the disks. When printed, the documents filled approximately 269 boxes. After
reviewing the documents for privilege, GI and Motorola produced
the non-privileged documents to WH-TV, in paper form. WH-TV paid
for its paper copy of the production. According to GI and
Motorola, they incurred $109,627.46 in costs for printing and
numbering these documents.
On April 25, 2003, WH-TV moved to compel Motorola to produce
the files in electronic form. WH-TV stated that it was necessary
to have the files in electronic form, because the electronic
files contained "metadata" that are not printed on the hard
copies. WH-TV also noted that having the files in electronic form
would allow it to search them more easily. On May 2, 2003, this
court granted WH-TV's motion to compel.
Following the issuance of this court's May 2, 2003 order, GI
and Motorola engaged their own consultant to search the nineteen
disks to identify the file names that corresponded to the paper
documents that had been deemed to be privileged. GI and Motorola
provided a list of these file names to Computer Forensics, so
that the electronic files could be redacted from the disks.
Finally, GI's and Motorola's consultant reviewed the disks to
ensure that Computer Forensics had removed all privileged files
from them. According to GI and Motorola, they incurred an
additional $182,595.47 in costs for their consultant's work.
Given that GI and Motorola were able to produce the files in
electronic form, printing them was merely for GI's and Motorola's
convenience, and was not necessary for their production. In
addition, as noted above, the cost of numbering documents is not
recoverable under 28 U.S.C. § 1920. Finally, as also noted above,
the cost of a computer consultant is not listed as a recoverable
expense under Section 1920, and the cost of a consultant's work
of reviewing files for privilege and preparing them for
production is not recoverable. Accordingly, neither the $109,627.46 in costs GI and Motorola incurred for
printing and numbering the documents, nor the $182,595.47 in
costs for their consultant's work, will be recoverable.
ORDERED: WH-TV's Motion to Vacate April 14, 2004 Order
Awarding Costs to Motorola/GI and Objecting to Motorola/GI's Bill
of Costs [835-1] is granted in part and denied in part. Zenith's
Motion to Review Costs Taxed In Favor of General Instrument Corp.
and Motorola, Inc. [832-1] is granted. The costs taxed on April
14, 2004 are vacated. GI and Motorola are ordered to submit a
revised bill of costs to be taxed against WH-TV, consistent with
this order, on or before July 23, 2004. WH-TV's objections to the
revised bill of costs, which should only address the manner in
which the revised bill of costs does not conform to this order,
are due July 30, 2004.