Written by Tiana A. Bey
On May 13, 2020, the Ninth Circuit opened the door for courts to award attorney’s fees to parties seeking or defending against equitable relief actions that may implicate the Copyright Act. In Doc’s Dream v. Dolores Press, Inc., No. 18-56073 (9th Cir. May 13, 2020), the Circuit held broadly that “any action that turns on the existence of a valid copyright and whether that copyright has been infringed” is properly within the scope of attorney’s fees recoverable pursuant to the fee-shifting provision of the Copyright Act. And it applied that holding to the particular claim for declaratory relief before it, namely whether a party had abandoned a copyright.
Section 505 of the Copyright Act, 17 U.S.C. § 505, provides a court with discretion to “award a reasonable attorney’s fee to the prevailing party” as a part of the recoverable cost incurred “in any civil action under” the Copyright Act. Doc’s Dream presented a “first impression” issue: whether a declaratory relief claim concerning the judicially-created “copyright abandonment” doctrine qualifies as an action under the Copyright Act. To address this question, the Circuit had to decide whether a determination of copyright abandonment required a “construction” of the Copyright Act, and it answered in the affirmative.
Doc’s Dream arises out of the unauthorized use of a popular TV evangelist’s copyright-protected works online. Specifically, Dr. Eugene Scott (“Dr. Scott”) – the late religious leader who launched the first-ever 24-hour-a-day religious television network in North America in 1983 – created video-recorded sermons that aired on the network and were made available for on-line viewing through his website beginning in 1997. Doc’s Dream began posting Dr. Scott’s videos on its own website, and it subsequently filed a declaratory relief action in 2015 in response to a separate copyright infringement action brought by Dr. Scott’s wife, Pastor Melissa Scott and the exclusive licensee of Dr. Scott’s works, Dolores Press, Inc. (owned by Dr. Scott’s church). The declaratory relief claim sought a determination that Dr. Scott completely abandoned certain works before his death because he distributed them for free on his website. But Doc’s Dream lost on summary judgment.
As the prevailing party in the declaratory relief action, Pastor Scott and Dolores Press sought recovery of attorney’s fees under § 505. Although Doc Dream’s had invoked the Copyright Act in its complaint, Doc’s Dream argued that attorney’s fees could not be sought in a declaratory relief action invoking the common law doctrine of “copyright abandonment,” which might only tangentially relate to the Copyright Act. The district court agreed. It held – based on a review of Nimmer on Copyright (“Nimmer”) – that (1) actions arising under the Copyright Act required “construction” of provisions in the Copyright Act and (2) an action seeking a declaration of copyright abandonment was an action that required application of common property abandonment principles, not “on any provision of the Copyright Act.” The district court also denied attorney’s fees on the alternative ground that the theory of “copyright abandonment” is a judicially created doctrine that does not invoke the Copyright Act because it pre-dates the Copyright Act.
On appeal, the Ninth Circuit reversed, finding that the district court’s two holdings were “two leaps” of unpersuasive logic. On the district court’s first holding, the Circuit determined that the district court misread Nimmer, stating that the district court’s reliance on Nimmer’s use of the term “construction” to limit application of Copyright Act to the declaratory relief action was erroneous. It held that an action to determine abandonment of copyrights clearly falls within the bounds of the Copyright Act because Doc’s Dream sought “a declaration that the works in question fall outside the scope of copyright protection,” as stated in Nimmer. The Circuit found that the Act allows “the discretionary award of attorney’s fees in any action where the scope of the copyright is at issue.”
On the district court’s alternative holding, the Circuit held that the judicially created “copyright abandonment” doctrine does not automatically preclude application of the Copyright Act. The Circuit concluded that “properly evaluat[ing] an intellectual property creator’s alleged abandonment without invoking the Copyright Act” was effectively “impossible.” As such, Doc’s Dream’s declaratory relief claim invoked “sufficient ‘construction’ of the Copyright Act” to allow the district court to award § 505 attorney’s fees.
Though the Circuit decision does nothing to lessen a prevailing party’s difficult burden of proving that an award of attorney’s fees is warranted, the ruling is not insignificant. In deciding Doc’s Dream, the Circuit broadened the array of possibilities that parties can consider when weighing the financial risk versus financial reward of bringing or defending against actions related to copyright protections, even if the claim itself, like one for declaratory relief, does not fall squarely under the Copyright Act. Parties who find themselves litigating copyright-related claims in the Ninth Circuit can now add the possibility that a court will award attorney’s fees for certain equitable relief claims to their litigation strategy arsenal.
It is important to remember that the ruling does not change the discretionary nature of a district court’s award of attorney’s fees. Indeed, the Circuit remanded the case so the district court could make a discretionary determination on whether to award the fees. But Doc’s Dream clarifies that § 505 has wide-ranging application to “any action that turns on the existence of a valid copyright and whether that copyright has been infringed,” including those actions not rooted in the Copyright Act, but that may require construction of the Act.