Metropolitan News-Enterprise


Friday, June 22, 2018


Page 3


Ninth Circuit:

Discretionary Attorney Fees Properly Awarded in Copyright Case


By a MetNews Staff Writer


A panel of the Ninth U.S. Circuit Court of Appeals held yesterday that a local writer’s copyright infringement action was objectively unreasonable and affirmed the order that he pay the opposing parties’ attorney fees.

Circuit Judge Milan D. Smith Jr. wrote the opinion and was joined by Circuit Judges Mary M. Schroeder and Richard R. Clifton.

Dan Rosen, president of Shame on You Productions, the plaintiff in the case, sent his script titled Darci’s Walk of Shame to actress Elizabeth Banks in 2007. Banks later starred in the 2014 film Walk of Shame, which Rosen alleged had significant similarities to his earlier script.

Shortly after the film was released, Shame on You Productions (“SOYP”) sued Banks, her husband and the movie’s producer, Max Handelman, the film’s writer, Steven Brill, and several production companies involved with the film.

Morrow’s Decision

Then-District Judge Margaret Morrow of the Central District of California (now president and chief executive officer of Public Counsel) granted the defendants’ motion for judgment on the pleadings. She also presided over a hearing on their motion for attorney fees.

Before the hearing she issued a tentative ruling awarding $314,669.75 in fees and $3,825.15 in costs. In a minute order after the hearing, she promised to issue a final order.

Morrow retired without issuing the final order. Defendants filed a motion requesting the order, which was granted by Chief Judge Virginia Phillips. Phillips’ order awarded the same amounts enumerated in Morrow’s tentative ruling, Rosen’s production company appealed from that order.

Objective Unreasonableness

Smith said the District Court properly awarded discretionary attorney fees to the defendants pursuant to 17 U.S.C. §505 based on the objective unreasonableness of the lawsuit.

“When a court weighs whether to grant attorney’s fees, a legal argument that loses is not necessarily unreasonable,” he noted, but said:

“In this case, the district court based its determination that SOYP’s claim was objectively unreasonable on the distinct lack of similarity between the two works.”

He went on to point out:

The District Court did not find the substantial similarity issue to be close. It found that the two screenplays had only isolated plot elements in common, and that in all other regards they differed markedly.”

SOYP insisted the District Court’s conclusion was “inherently subjective” and that its own contrary perception was reasonable. Smith responded:

“[T]he district court’s holding that the two works were not substantially similar was based entirely on the objective extrinsic test, and not on the subjective intrinsic test. Because this test is objective. SOYP’s subjective beliefs regarding its outcome are no more relevant to the reasonableness determination than a party’s subjective belief regarding any other legal test.”

Other Factors

In addition to the reasonableness of the claim, Ninth Circuit case law requires consideration of the degree of success, frivolousness, motivation, and the need to advance considerations of compensation and deterrence as factors in awarding attorney fees to the prevailing party in a copyright claim.

In yesterday’s decision, Smith noted that SOYP conceded the degree of success favored Banks and the other defendants. It also focused on SOYP’s bad faith performance which the District Court had found after the plaintiff had refused to comply with a court order requiring it to turn over its script to the defendants.

Defendants argued that SOYP knew its claim was meritless and were simply being obstructionist in order to obtain a nuisance-value settlement.

Smith questioned that argument but deferred to the District Court’s finding that the plaintiff had acted in bad faith. He found no problem with the trial court’s finding that attorney fees would deter future filing of objectively unreasonable or bad faith claims.

The was not so inclined to defer to the lower court’s opinion that the fee award would advance the goals of the Copyright Act.

“This generic reasoning,” he wrote, “might be in tension with the Supreme Court’s repeated admonition that ‘a district court may not ‘award attorney’s fees as a matter of course’ to a prevailing party.”

Despite casting doubt on that reasoning, he said the lower court had properly awarded fees under Ninth Circuit law.

The case is Shame on You Productions v. Banks, 16-55024.

SOYP was represented on appeal by Charles M. Coate of Abrams Coate LLP in Los Angeles. Stephen R. Mick of Barnes & Thornburg LLP’s Los Angeles branch argued for the defendants.


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