Prayer for Declaratory Relief Invokes Copyright Act and Available Attorneys’ Fees
Vacating the district court’s order denying a defendant’s recovery of attorneys’ fees under the Copyright Act, the US Court of Appeals for the Ninth Circuit held that, even when asserted as a claim for declaratory relief, any action that turns on the existence and potential infringement of a valid copyright invokes the Copyright Act and therefore gives the district court discretion to award reasonable attorneys’ fees pursuant to § 505 of the Copyright Act. Doc’s Dream, LLC v. Dolores Press, Inc. and Melissa Scott, Case No. 18-56073 (9th Cir. May 6, 2020) (Callahan, J.).
In a long-running and multi-action dispute between Doc’s Dream and Dolores Press over the ownership rights and usage of video-recorded sermons created by the late religious leader Dr. Eugene Scott, the Ninth Circuit affirmed a district court grant of summary judgment in favor of Dolores in response to Doc’s Dream’s petition for a declaratory judgment on grounds that Dr. Scott abandoned his copyrighted works to the public domain. Citing that victory, Dolores filed to recover its attorneys’ fees under § 505 of the Copyright Act, which allows for an award of reasonable attorneys’ fees to the prevailing party in “any civil action under this title.” The district court denied Dolores’ motion, holding that attorneys’ fees were not available under the fee-shifting provision, because Doc’s Dream’s declaratory judgment petition for a determination of copyright abandonment did not require “construction” of the Copyright Act. Dolores appealed.
The question of whether Doc’s Dream’s underlying action seeking declaratory relief sufficiently invoked the Copyright Act to allow for an award of attorneys’ fees under § 505 was one of first impression for the Ninth Circuit. The Court examined the district court’s two unpersuasive “leaps of logic.” First, the Court opined that that the district court misread the Nimmer on Copyright treatise and its use of the word “construction” as demanding that a declaratory judgment require “construction” of the Copyright Act to qualify as a “civil action” eligible for fee-shifting. Instead, the Court explained that, read in proper context, Nimmer reads § 505 in the same manner as the Ninth Circuit panel here—namely, allowing the discretionary award of attorneys’ fees in any action where the scope of the copyright is at issue. Here, the Court found that a claim alleging the possible abandonment of the copyrights put the question of copyright scope “very much at issue.”
Second, the Ninth Circuit rejected the district court’s assertion that an allegation of copyright abandonment does not actually invoke the Copyright Act because copyright abandonment is a doctrine created by Judge Learned Hand (2d Cir.) in Nat’l Comics Publ’ns v. Fawcett Publ’ns and is not based on any provision of the Copyright Act. On this point, the court clarified that the judicial origin of the copyright abandonment doctrine does not mean that an allegation of abandonment does not invoke the Copyright Act. In fact, the Court noted that Doc’s Dream’s declaratory judgment action raised at least three issues under the Copyright Act (ownership attribution requirements, evidence of Dr. Scott’s licensing of his content, and Dr. Scott’s use of a copyright notices affixed to his works), all of which weigh against claims of abandonment. Moreover, the Court explained that the judicially created elements for finding copyright abandonment—namely, an intent to abandon ownership and some overt act manifesting this intent—are impossible to evaluate without invoking the Copyright Act.
Therefore, in finding that declaratory relief action alleging abandonment of a copyright invokes sufficient “construction” of the Copyright Act to allow for the discretionary award of attorneys’ fees pursuant to § 505, and given the district court’s “erroneous view of the law,” the Ninth Circuit vacated and remanded for the district court to consider whether an award of attorneys’ fees is appropriate under existing Supreme Court guidance.