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Gilbert v. New Line Productions, USCA Ninth Circuit, July 13, 2012 (unpublished opinion)
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Ninth Circuit affirms summary judgment in favor of defendants in copyright action, finding no similarity between protectible expressions in various works at issue, and affirms award of attorneys’ fees, but vacates and remands portion of award for which district court provided no specific findings as to what rate and amount of time is reasonable.
Plaintiff Sheri Gilbert, the author of the screenplay When Mom's the Other Woman (The Other Woman), brought a copyright infringement action against defendants, entities involved in the making of the 2005 motion picture Monster-in-Law, asserting that they unlawfully copied drafts of her screenplay. The district court granted summary judgment in favor of defendants, holding that neither the Monster-in-Law film nor any of the drafts of the screenplay infringed on any of the drafts of The Other Woman for which plaintiff had sought copyright registration prior to suing defendants (Gilbert had not registered the first draft at the time she sued defendants), and awarded defendants their costs and fees as prevailing parties under the Copyright Act. On appeal, the Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal of plaintiff’s action, finding insufficient similarity between the protectible expression in the various works to maintain a claim. Specifically, the court noted that while the basic plots of Monster-in-Law and The Other Woman are the same – both works tell the story of a mother who meddles in her son's life and tries to break up his engagement – neither basic plot nor elements that naturally flow from those plots – known as scènes à faire – are entitled to copyright protection. The district court found, and the Ninth Circuit agreed, that the very few similarities between the film and plaintiff’s drafts of her screenplay were unprotectible scènes à faire.
While the Ninth Circuit affirmed the district court’s award of attorneys’ fees and costs to defendants, holding that the court properly found that defendants achieved complete success on the merits of plaintiff’s claim, which were objectively unreasonable, the circuit court vacated part of the fee award related to work performed by defendants’ North Carolina counsel (plaintiff first filed her action in North Carolina and the court there transferred it to the Central District of California). The district court made the required specific findings as to what rate and amount of time was reasonable relating to the work of California counsel, properly ruling that defendants were entitled to $801,130 in attorney's fees. The court made no determinations with respect to North Carolina counsel, but included an additional $79,282 in the fee award – the amount of defendants’ request for fees attributable to services performed by North Carolina counsel. Noting that it could not determine whether the district court's final award resulted from “an administrative error or the uncritical acceptance of counsel's representations,” the court vacated that potion of the fee award and remanded to the district court for reconsideration.
Bissoon-Dath v. Sony Computer Entertainment America Inc., USDC N.D. California, July 24, 2012
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Following dismissal of plaintiffs’ copyright claims alleging that defendants misappropriated their works to develop the video game God of War, district court denies defendants’ motion for attorneys’ fees, concluding that plaintiffs' claims were not frivolous and that attorneys’ fees would not serve the purpose of the Copyright Act.
Plaintiffs Jonathan Bissoon-Dath and Jennifer Dath brought a copyright infringement suit against Sony Computer Entertainment America Inc. and others, alleging that defendants misappropriated plaintiffs’ original copyrighted works to develop the popular video game God of War. After the Ninth Circuit affirmed the district court’s grant of summary judgment in defendants’ favor and dismissed plaintiffs’ claims in their entirety, defendants moved for an award of attorneys’ fees under the Copyright Act. The court denied the motion, finding that defendants’ complete success in defeating plaintiffs’ claims was not dispositive, and that the remaining factors weighed against awarding defendants attorneys’ fees.
At the outset, the court noted that, under section 505 of the Copyright Act, a district court may award reasonable attorneys’ fees to the prevailing party in a copyright infringement suit. In determining a prevailing party’s entitlement to attorneys’ fees, the Supreme Court has enunciated a number of nonexclusive factors – known as the Fogerty factors – including frivolousness, motivation, objective reasonableness and the need in particular circumstances to advance considerations of compensation and deterrence. In addition to these factors, the Ninth Circuit has added additional factors, including the degree of success obtained, the purposes of the Copyright Act, and whether the chilling effect of attorneys’ fees may be too great or impose an inequitable burden on an impecunious plaintiff.
Defendants argued that they were entitled to attorneys’ fees because they achieved complete success in defeating plaintiffs’ claims. Agreeing that the degree of success obtained is a factor weighing in favor of an award of fees, the court found that this factor is not dispositive. If it were, explained the court, all prevailing parties would be entitled to attorneys’ fees as a matter of course – which is not the law.
In evaluating the other factors, the court first found that plaintiffs’ claims were not objectively unreasonable. A frivolous claims, explained the court, is one in which the factual contention is clearly baseless, such as factual claims that are fantastic or delusional scenarios. While the court found that plaintiffs’ claims lacked merit, it concluded that they do not rise to the level of frivolous. The court rejected defendants’ assertion that plaintiffs knew or should have known that their claims were baseless from a “simple reading” of the works at issue, pointing to its own summary judgment order as evidence that a comparison of the various works at issue was not simple. The court also emphasized that plaintiffs performed their due diligence prior to filing suit. The court also found unpersuasive defendants’ contention that they had warned plaintiffs that their claim lacked merit at the outset by sending plaintiffs a letter that outlined weaknesses in their case. It is neither surprising nor unusual, stated the court, for a party to reject an adversary’s assessment of its case.
The court also found that scant evidence of improper motive. Defendants argued that plaintiffs’ suit was "another in the long line of cases where an aspiring writer comes out of the woodwork with unsupported claims that a successful movie or game copied his unpublished script, in hopes of forcing a [d]efendant to pay a large settlement . . . ." According to the court, the financial success of the God of War franchise and the dismissal of plaintiffs’ claims were not sufficient to establish improper motive, and no evidence existed that plaintiffs sought to publicize the case to gain attention for themselves or their works, or that they sought to enjoin distribution of defendants’ work in order to extract a nuisance settlement. The court also noted that the amount of time and effort plaintiffs devoted to their suit weighed against a finding of bad faith. It is unlikely, stated the court, that plaintiffs would have made such a personal sacrifice if they believed their claims lacked merit.
Finally, the court concluded that awarding defendants attorneys’ fees would not necessarily serve the purpose of the Copyright Act. Holding plaintiffs liable for over a million dollars in attorneys’ fees, reasoned the court, would have a chilling effect on suits that could be brought under the Copyright Act. Individual plaintiffs might be hesitant to bring meritorious infringement claims in the future if they believe that such claims would lead to financial ruin.
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