Intellectual Property: Ninth Circuit Affirms $314,669.75 Fee Award And $3,825.15 Cost Award In Favor Of Successful Defendants In Copyright Infringement Case

Case Involved Allegations That Defendants Copied Screenplay From Plaintiff In Connection With The Film “Walk Of Shame.”

            Shame On You Productions, Inc. (SOYP) v. Banks, No. 16-55024 (9^th Cir. June 21, 2018) (published) involved awards of $314,669.75 in attorney’s fees and of $3,825.15 in costs to defendants under the federal copyright fee-shifting statute (17 U.S.C. § 505) after plaintiff lost copyright infringement and breach of implied contract claims based upon a motion for judgment on the pleadings (although the contract claim was dismissed without prejudice subject to renewal in state court, where it was apparently refiled later). SOYP appealed, but the awards were affirmed by the Ninth Circuit. The basis for the suit was that Defendants associated with the film “Walk of Shame” copied from a previous screenplay given before the film’s release by SOYP.

            Although not referring to SCOTUS’ guiding opinion in Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1985, 1989 (2016) in the awards, the Ninth Circuit has affirmed pre-Kirtsaeng decisions where the record showed no different result was required. Here, objective unreasonableness is a key factor, with the district judge saying the issue was not close as far as the distinct lack of similarity between SYOP’s and Defendants’ screenplays. Beyond that, subsidiary factors also supported the fees/costs awards: (1) the degree of success factor favored the defense based on the federal claim “win”; (2) the bad faith factor favored the defense given SYOP’s dilatoriness in turning over its screenplay during discovery; and (3) the deterrence factor favored the defense. However, the Ninth Circuit found that the factors relating to promoting the overall goals of the Copyright Act and to extending the law into free expression areas were skeptical bases for the awards, such that they did not need to be used as far as affirming the awards at issue.

            No apportionment of fees on the state law claim was necessary, given that the claims were interrelated to the copyright infringement claim.

            The amount of the award was reasonable because (1) time entry redactions for work product purposes were proper; (2) the district judge did deduct half of time spent on some defense discovery responses (boilerplate in nature); (3) losing motions may be compensable, given that the defense opposition to motions to compel resulted in them only being granted in part; and (4) the district court did refuse to compensate for some attorney work and lowered paralegals’ claimed hourly rates down to $250 each.

            Also, in an interesting challenge to the timeliness of the fee motion, the Ninth Circuit found that the initial motion was timely filed; just because it was rejected for e-filing deficiencies did not mean that it could not be considered.