A recent Law 360 story by Dave Simpson, “Atty Fees OK in Copyright Declaratory Relief Actions: 9th Circ.” reports that any legal action that hinges on the existence of a valid copyright and whether that copyright has been infringed, even if the claim is for declaratory relief, invokes the Copyright Act and is therefore eligible for attorney fees, the Ninth Circuit ruled vacating a lower court's order.  In a unanimous, published decision, a three-judge panel disagreed with a California federal judge who shot down Dolores Press Inc.'s bid for attorney fees after the Christian media company defeated a copyright abandonment challenge from rival Doc's Dream LLC.

U.S. District Judge Manuel L. Real held that fees were not available to Dolores because the determination of copyright abandonment did not require construction of the Copyright Act, but the appellate panel found numerous examples of Judge Real relying on the act in his decision.  "Certainly, the elements required for copyright abandonment — overt acts and intent — parallel other forms of property abandonment," the panel said.  "But it is difficult — if not impossible — to properly evaluate an intellectual property creator's alleged abandonment without invoking the Copyright Act."

The dispute centers on video-recorded sermons created by the pastor Dr. Eugene Scott, who died in 2005.  Dolores Press licenses the rights to Scott's sermons from his widow, Melissa Scott, but Doc's Dream, which was denied permission to share the sermons, posted them on its website "to stick it to the devil" and "get the ball rolling in this legal battle."  The ball got rolling in 2015, with Dolores filing three infringement suits against Doc's Dream and Doc's Dream filing a fourth against Dolores, claiming Scott abandoned the rights to all his works before his death.

Dolores was ultimately victorious in all four suits. Dolores then argued that Doc's Dream brought its failed copyright abandonment action in bad faith and asked the court to grant it attorney fees under a provision of the Copyright Act.  But Judge Real shot the bid down, making, in the words of the panel, two unpersuasive "leaps of logic."

"First, it held that in order to be a civil action under the Copyright Act, a declaratory judgment must require 'construction' of the Copyright Act," the panel explained.  "Second, the district court reasoned that because copyright abandonment is a judicially created doctrine based in principles of equity and not on any provision of the Copyright Act, a declaratory relief action based on abandonment does not invoke the Copyright Act."

In the first instance, Judge Real misread a "leading treatise" on copyright law, called "Nimmer on Copyright."  The panel's decision included a close read of Nimmer's thoughts on the Copyright Act provision and ultimately agreed with the conclusion that the discretionary award of attorney fees is available in any action where the scope of the copyright is at issue.  In rejecting the second leap of logic, the panel pointed to three instances in which Judge Real had considered the Copyright Act in dismissing the complaint from Doc's Dream.

"In sum, we think that a declaratory relief action alleging abandonment of a copyright invokes sufficient 'construction' of the Copyright Act to allow for the discretionary award of attorney's fees," the panel said.  It vacated the lower court's decision and remanded the question of attorney fees for its consideration.