MEMORANDUM AND ORDER

JAMES C. FRANCIS IV, United States Magistrate Judge.

This is an action in which the plaintiff, Torah Soft Ltd. ("Torah Soft"), alleged that its copyright in computer software was infringed when printouts generated by the software were reproduced in the bestselling book The Bible Code, written by the defendant Michael Drosnin and published and distributed by the other defendants. In a decision dated March 30, 2001, the Honorable Shira A. Scheindlin, U.S.D.J., granted summary judgment in favor of the defendants and dismissed the complaint. Torah Soft Ltd. v. Drosnin, 136 F. Supp.2d 276 (S.D.N Y 2001). The parties then consented to refer the case to me pursuant to 28 U.S.C. § 636(c) to determine the defendants' motion for attorneys' fees under section 101 of the Copyright Act of 1976, 17 U.S.C. § 505. For the reasons that follow, the defendants' motion is granted, but calculation of the amount of the award is deferred.

Background

The factual background of this case is set forth in Judge Scheindlin's decision and will not be repeated in detail here. "Bible code" theory holds that the Hebrew Bible contains prophesies of the future encrypted within its text. The code can be broken by identifying letters, each equidistant from the next (equidistant letter skips or "ELS's"), that form a recognizable word or phrase. Then, the text of the bible is rearranged in columns, each the length of the number of letters skipped. For example, in The Bible Code, Mr. Drosnin contends that "Yitzhak Rabin" appears once in the Bible, each letter of the name separated by 4,772 others. The ELS is therefore 4,772. Columns of letters, each 4,772 units high, thus form a matrix, and the curious can then determine whether any recognizable phrase intersects the word at issue, implying a prophesy. In the previous example, the name "Yitzhak Rabin" was crossed by the phrase "assassin will assassinate," a "prediction" that was borne out.

Torah Soft's Bible code software was developed by its principal, Dr. Yochanan Spielberg. According to the plaintiff, Mr. Drosnin used this software in conducting his searches for Biblical prophesies and then reproduced some ninety-nine printouts generated by that software in the final version of his book. Moreover, according to Dr. Spielberg, Mr. Drosnin had induced him to modify the software by promising that he would credit Torah Soft and provide contact information for it in the book.

In April 1998, after The Bible Code was published, Torah Soft commenced suit against Mr. Drosnin and his publisher, Simon Schuster, Inc., in New York State Supreme Court, alleging that Mr. Drosnin had breached contractual obligations by failing to include any mention of Torah Soft in the book. In January 2000, that case was removed to this Court, Torah Soft Ltd. v. Drosnin, 00 Civ. 0676, and is currently pending before me.

On July 28, 2000, the plaintiff filed the instant copyright action, and it was disposed of on the merits when Judge Scheindlin granted summary judgment to the defendants. Because her decision is central to the attorneys' fees issue, I will review it in some detail. After setting out the facts, Judge Scheindlin identified the scope of Torah Soft's claims:

Plaintiff does not claim to have discovered the Bible code, invented the concept of ELS's, or even created the original Bible code software. Plaintiff does not claim that it is the author of Drosnin's specific Bible code finds. Nor does plaintiff accuse defendants of creating an infringing Bible code software or database. Rather, plaintiff claims that defendants' reproduction of the Printouts constitutes copyright infringement.

Torah Soft, 136 F. Supp.2d at 282. Next, Judge Scheindlin determined that the printouts were "fixed" in a tangible medium and therefore potentially protectable. Id. at 282-84. She then proceeded to utilize the "abstraction-filtration-comparison" analysis to determine which if any elements of Torah Soft's computer program were protectable such that the printouts, as derivative works, would likewise be subject to copyright. Id. at 284-86 (citing Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992)).

Judge Scheindlin focused first on the database used by Torah Soft. She noted that the "backbone" of the database was the Hebrew Bible, in which the plaintiff, of course, claimed no protectable interest. Id. at 286. Nevertheless, Torah Soft asserted that its database consisted of a variation of the Bible that qualified for copyright protection in three respects. First, Dr. Spielberg had altered references to God in order to conform to the rules of sheimot that prohibit using God's name in a transient medium. He accomplished this by substituting non-Hebrew symbols such as a pound sign (#) or asterisk (*) for each specific letter of the various Hebrew names for God. Judge Scheindlin found, however, that "[a]s a functional, as opposed to a creative, alteration, the sheimot changes are not protectable." Id. at 287. She characterized the choice of substitute symbols as "`obvious, garden-variety, or routine selections.'" Id. (quoting Matthew Bender Co. v. West Publishing Co., 158 F.3d 674, 682 (2d Cir. 1998)).

Next, Torah Soft argued that Dr. Spielberg's selection of what he determined to be the most authoritative versions of the books of the Bible known as the Prophets and the Writings was protectable. Judge Scheindlin rejected this contention as well since the selection process required not creativity, but only time and effort, and "such `sweat of the brow' does not confer copyright protection." Id. at 288 (citing Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 359-60 (1991)).

Finally, Dr. Spielberg altered certain letters in the Hebrew Bible to achieve consistency in the database. In Hebrew, five consonants are written differently when they appear at the end of a word than when they appear elsewhere. Accordingly, Dr. Spielberg replaced all final consonants in the Bible with non-final consonants. Id. at 281 n. 6. This, too, Judge Scheindlin found to be unprotectable, commenting that the "mechanical substitution of two forms of the same Hebrew letter `required no skill beyond that of a high school . . . student and displayed no originality.'" Id. at 289 (quoting Grove Press, Inc. v. Collectors Publication, Inc., 264 F. Supp. 603, 605 (C.D.Cal. 1967)).

Judge Scheindlin then proceeded to analyze whether any elements of the software were protectable. Torah Soft asserted, first, that the display of Bible code discoveries in a matrix format qualifies for copyright protection. Judge Scheindlin determined, however, that "Spielberg did not originate the idea of displaying Bible code finds in a matrix format," and consequently, this element "cannot contribute to the Software's originality." Id. at 289 (footnote and citation omitted). Moreover, because Bible code finds could only be displayed in a limited number of ways, "the matrix format is a commonplace or stock feature of Bible code software and is not protectable." Id. at 290 (footnote and citations omitted).

Second, Judge Scheindlin rejected the argument that the software's ability to display multiple Bible code finds in a single matrix was protectable. She found that this expression merges with the idea of the Bible code itself, much as the visual grid of a crossword puzzle merges with the concept of the puzzle itself as a series of intersecting words. Id. at 290.

Third, Torah Soft contended that the software's algorithm, which searches for the least common letter of any search term, was protectable. Judge Scheindlin held, however, that "[a]n algorithm . . . is clearly a method of operation which cannot be protected." Id. at 291 (citations omitted).

Lastly, Judge Scheindlin found that the ability of the software to disregard spaces between words in calculating equidistant letter skips was not protectable. She held that "this function is not sufficiently original or creative to be worthy of protection." Id. at 292 (citation omitted). Furthermore, this function is common to Bible code software generally and, like the algorithm, is a method of operation. Id.

Judge Scheindlin concluded that:

In sum, none of the features of the Database or the Software are sufficiently original to merit protection. Plaintiff has failed to satisfy its burden of proving that the software's outputs of Bible code finds, as displayed in the matrixes, contain protectable expression.

Id. Thereafter, counsel for Mr. Drosnin and counsel for the publishing defendants each moved for an award of costs, including attorneys' fees.

Discussion

In a copyright action, the court "may . . . award a reasonable attorney's fee to the prevailing party as part of the costs." 17 U.S.C. § 505. This fee-shifting provision is symmetrical: attorneys' fees are equally available to prevailing plaintiffs and defendants. Fogerty v. Fantasy, Inc., 510 U.S. 517, 533 (1994). Such an award, however, is not automatic, but is a matter within the court's discretion. Id. at 533-34. In exercising that discretion, courts consider a variety of factors including "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Id. at 534-35 n. 19 (quoting Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1986)). The defendants' fee applications can now be analyzed in light of these factors.

A. Frivolousness and Objective Unreasonableness

The label of "frivolous" is appropriately reserved for the most extreme cases, as, for example, where a plaintiff claims a copyright in material that is clearly within the public domain. If, in this case, Torah Soft had explicitly asserted copyright protection for the Hebrew Bible, its claim would indeed be frivolous. It did not, and I find that its claims with respect to the database and the software were not so lacking in merit as to be frivolous.

However, that does not end the inquiry. A claim that is not frivolous may still be objectively unreasonable. "The infirmity of the claim, while falling short of branding it as frivolous or harassing, must nonetheless be pronounced," CK Co. v. Burger King Corp., No. 92 Civ. 1488, 1995 WL 29488, at *1 (S.D.N.Y. Jan. 26, 1995), aff'd, 122 F.3d 1055 (2d Cir. 1995), and "the mere fact that a defendant obtains summary judgment does not necessarily mean that the plaintiff's position was frivolous or objectively unreasonable." Earth Flag Ltd. v. Alamo Flag Co., 154 F. Supp.2d 663, 666 (S.D.N.Y. 2001) (citation omitted). But if a claim is held to have been objectively unreasonable, such a finding is accorded "substantial weight," Matthew Bender Co. v. West Publishing, Inc., 240 F.3d 116, 120-21 (2d Cir. 2001), and it may be sufficient, by itself, to justify an award of fees. See Adsani v. Miller, No. 94 Civ. 9131, 1996 WL 531858, at *13 (S.D.N.Y. Sept. 19, 1996) (collecting cases); Williams v. Crichton, 891 F. Supp. 120, 121 (S.D.N.Y. 1994); Screenlife Establishment v. Tower Video, Inc., 868 F. Supp. 47, 52 (S.D.N.Y. 1994); Woods v. Bourne Co., 858 F. Supp. 399, 399 n. 1 (S.D.N.Y. 1994).

In this case, Torah Soft makes much of the fact that Mr. Drosnin included numerous direct copies of the computer printouts in his book. However,

No amount of copying will constitute infringement where a defendant copies only the trivial or non-original contributions of a plaintiff's work. See Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (2d Cir. 1980). This is consistent with the broader understanding that "[t]he sine qua non of copyright is originality." Feist Publications, 499 U.S. at 345. While the standard of originality is low, it is well established that a work must possess more than a de minimus amount of creativity. See id. at 345, 362.

Earth Flag, 154 F. Supp.2d at 667. The Second Circuit has characterized the test for determining originality in connection with a computer program as follows:

Once a court has sifted out all the elements of the allegedly infringed program which are "ideas" or are dictated by efficiency or external factors, or taken from the public domain, there may remain a core of protectable expression. In terms of a work's copyright value, this is the golden nugget.

Altai, 982 F.2d at 710 (citation omitted).

Here, there was no golden nugget, only dross. Judge Scheindlin rejected Torah Soft's claims of copyright as to each element alleged to be protectable because the plaintiff's contributions were "obvious, garden-variety, or routine selections," Torah Soft, 136 F. Supp.2d at 287, "sweat of the brow," id. at 288, "commonplace or stock feature[s]," id. at 290, or unprotectable ideas or methods of operation, id. at 290-92, or "required no skill beyond that of a high school . . . student," id. at 289. She concluded that neither the database nor the software was "sufficiently original to merit protection." Id. at 292.

Nevertheless, Torah Soft argues that this case was sufficiently novel and complex such that no attorneys' fees should be awarded. "[A] court should not award attorneys' fees where the case is novel or close because such a litigation clarifies the boundaries of copyright law." Earth Flag, 154 F. Supp.2d at 666 (citations omitted). Mr. Spielberg argues that the case is novel because the subject of the Bible code was largely unknown outside Israel prior to his work. (Declaration of Yochanan Spielberg dated Aug. 16, 2001 ("Spielberg Decl."), ¶¶ 10-11). But "novelty," for purposes of a fee award turns on the uniqueness of the legal issues presented, not on the eccentricity of the underlying subject matter. To be sure, this case required a more extensive analysis than that performed by Judge Scheindlin in Earth Flag. But that is simply a factor of Torah Soft having asserted protection for many different elements in this case. The analysis as to any particular element was not difficult or complex, and neither was the decision in toto: the sum of many zeroes is still zero.

Nor is it significant that Judge Scheindlin rejected the defendants' argument that the allegedly protectable elements were not "fixed." The fact that a claim is not frivolous in every respect does not mean that it is objectively reasonable. Indeed, if it is clearly without merit on any determinative issue, then it is objectively unreasonable. That is the case here. An award of fees is appropriate on this basis alone.

B. Motivation

The defendants also argue that the filing of this action was motivated by the desire of the plaintiff to advance a claim that would trigger Simon Schuster's insurance coverage. Whether this specific factor inspired the plaintiff to raise the copyright issue is a matter of dispute. Torah Soft has, for example, proffered an innocent explanation for its failure to assert a copyright claim until after it became aware of Simon Schuster's insurance. (Second Declaration of Eric S. Sherby dated Aug. 15, 2001 ("Second Sherby Decl."), ¶¶ 25-34).

What Torah Soft has not explained is its purpose in advancing the copyright claims at all. As discussed above, the copyright theory, if not frivolous, was extremely tenuous. Moreover, it was largely inconsistent with Torah Soft's contract claim in which the plaintiff alleges that Dr. Spielberg made changes in the software for Mr. Drosnin, labeled the software as copyrighted by Torah Soft "for the use of Michael Drosnin only," and solved "printing problems" for Mr. Drosnin as they arose. (Complaint, attached as Exh. B to Notice of Removal in 00 Civ. 0676, ¶¶ 48-53). These allegations at least imply that Torah Soft granted a license to Mr. Drosnin. Even if the plaintiff could argue that the contract and copyright claims are ultimately reconcilable, the tension between them was sure to be problematic for Torah Soft in litigation.

These factors provide strong circumstantial evidence that the copyright claim was not brought because of its inherent merit but because of its value in settlement negotiations. It was another chip, belatedly introduced to strengthen Torah Soft's bargaining position. And a party that knowingly gambles on an unreasonable legal theory in order to achieve a secondary gain — in this case, the leveraging of a settlement — is indeed improperly motivated.

C. Purpose of the Copyright Act

The Copyright Act's goals are "promoted by the discouragement of infringement as well as by the successful defense of copyright infringement actions." Procter Gamble Co. v. Colgate-Palmolive Co., No. 96 Civ. 9123, 1999 WL 504909, at *4 (S.D.N.Y. July 15, 1999). Accordingly, where a court is considering a defendant's application for fees, it must weigh whether such an award would "excessively chill" or "beneficially deter" future lawsuits. Id. Where, as here, an infringement action is effectively a "strike suit," brought to compel settlement of a broader dispute, an award of fees is a beneficial deterrent. "Failing to award attorneys' fees to defendants in such situations would invite others to bring similarly unreasonable actions without fear of any consequences." Earth Flag, 154 F. Supp.2d at 668.

D. Financial Strength of the Parties

Finally, although not mentioned by the Supreme Court in Fogerty, the relative financial resources of the parties is an appropriate factor to be considered in awarding fees under the Copyright Act. See Leibovitz v. Paramount Pictures Corp., No. 94 Civ. 9144, 2000 WL 1010830, at *5 (S.D.N.Y. July 21, 2000); Littel v. Twentieth Century-Fox Film Corp., No. 89 Civ. 8526, 1996 WL 18819, at *3 (S.D.N.Y. Jan. 18, 1996), aff'd sub nom. DeStefano v. Twentieth Century Fox Film Corp., 100 F.3d 943 (2d Cir. 1996) (table). Here, Dr. Spielberg alleges that Torah Soft's sales have been minimal and that it has had to borrow tens of thousands of dollars to finance the litigation. (Spielberg Decl. ¶¶ 6-7). Although such facts, if fully documented, may affect the magnitude of any award, they need not preclude altogether some assessment of fees. Moreover, should Torah Soft prevail in the contact action it may receive damages sufficient to pay fees in this case. It is therefore appropriate to defer determination of the amount to be awarded in fees until the contract action has been concluded and Torah Soft has provided proof of its purported lack of financial resources. See Littel, 1996 WL 18819, at *3 (plaintiffs required to document financial circumstances).

Conclusion

Torah Soft's copyright claims were objectively unreasonable and, at least in part, improperly motivated, and an award of fees against the plaintiff will serve an appropriate deterrent function. Torah Soft shall therefore be liable to the defendants for an award of costs, including attorneys' fees, pursuant to section 101 of the Copyright Act. Determination of the amount of the award is deferred pending the conclusion of the related contract action and the receipt of documentation of the plaintiff's finances.

SO ORDERED.