Shame on You Productions v. Elizabeth Banks
893 F.3d 661
9th Cir.2018Background
- Plaintiff Shame On You Productions (SOYP) alleged Defendants copied its 2007 screenplay "Darci’s Walk of Shame" to make the 2014 film Walk of Shame and sued for copyright infringement and breach of implied contract.
- SOYP alleged some Defendants had access to the script; the disputed element at issue was substantial similarity.
- Discovery was contentious: SOYP delayed producing its screenplay despite court orders and filed multiple motions to compel; the district court found obstructive conduct.
- The district court granted Defendants’ motion for judgment on the pleadings, dismissing the copyright claim with prejudice for lack of substantial similarity and dismissing the state contract claim without prejudice. The Ninth Circuit affirmed the merits decision.
- Defendants moved for attorneys’ fees under 17 U.S.C. § 505; the district court awarded approximately $314,670 in fees and $3,825 in costs. The award was later finalized by a different judge after the original judge retired.
- On appeal, SOYP challenged entitlement to fees, fee apportionment as to the state claim, the reasonableness/amount of the award, and timeliness of the fee motion; the Ninth Circuit affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Entitlement to attorney’s fees under § 505 | SOYP argued Kirtsaeng required greater weight to its litigating position and the district court failed to account for Kirtsaeng | Defendants argued SOYP’s claim was objectively unreasonable and other Fogerty factors supported fees | Court held defendants entitled to fees; Kirtsaeng did not change outcome and district court properly considered factors, emphasizing objective unreasonableness |
| Objective reasonableness of copyright claim | SOYP contended similarities could reasonably be seen as substantial and the issue was not close | Defendants argued the works were only similar in unprotectable ideas and scenes-à-faire; objective extrinsic test showed little overlap | Court held the extrinsic comparison showed only isolated similarities and substantial difference in plot, characters, dialogue—claim was objectively unreasonable |
| Fee recovery for state-law implied contract claim (apportionment) | SOYP argued fees should be limited to copyright defense, not the related state claim | Defendants argued claims arose from same core facts and related theories so fees may cover both | Court held claims were interrelated (common core of facts); no apportionment required |
| Timeliness of fee motion | SOYP argued fee motion was filed after Rule 54(d)(2) 14-day deadline | Defendants noted initial timely filing and clerical refile instruction; deadline is not jurisdictional | Court held any timing defect was not jurisdictional and SOYP forfeited the argument by not raising it below |
Key Cases Cited
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (Sup. Ct.) (factors courts may consider in awarding copyright fees)
- Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (Sup. Ct.) (courts should give substantial weight to reasonableness of losing party’s litigating position)
- Wall Data Inc. v. L.A. Cty. Sheriff’s Dep’t, 447 F.3d 769 (9th Cir.) (set of factors Ninth Circuit courts consider under § 505)
- Three Boys Music Corp. v. Bolton, 212 F.3d 477 (9th Cir.) (access plus substantial similarity required)
- Cavalier v. Random House, Inc., 297 F.3d 815 (9th Cir.) (scenes-à-faire doctrine and extrinsic/intrinsic tests)
- Traditional Cat Ass’n, Inc. v. Gilbreath, 340 F.3d 829 (9th Cir.) (prevailing party may recover fees for related claims sharing common core of facts)