Attorney’s Fees


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Because many creative people participate in the making of an artistic, documentary or commercial film, in order to exploit the film efficiently, it is critical to pinpoint who owns the copyright in the finished work as well as in the raw footage.

Congress recognized that an unwieldy situation could arise with respect to the control of a film’s copyright unless there was a way for all copyright interests to reside with a single owner. This is because if a non-employee of the producer made a creative contribution during a film’s production, such contribution could be viewed as copyright protected. To address the problem, Congress adopted a mechanism in the Copyright Act of 1976 (the “Act”) which treats any such contribution as a work-made-for-hire (“WMFH”) [WMFH Described] if the parties so agree in a signed document. Under such circumstances, all copyright rights in any creative contributions belong to a single owner, most likely the producer.

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Can You Learn Anything from Monster Energy’s Run-In with the Beastie Boys?

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The dispute that led to the legal battle between the Beastie Boys band and Monster Energy Company (“Monster”), involved Monster’s use without permission of songs by the Beastie Boys and verbal references to the band and a member, Adam Yauch, in a promotional video. Monster’s negligible music licensing procedures were strongly criticized by the trial judge. The one-sided victory of the Beastie Boys for copyright infringement and false endorsement has led to Monster being found financially liable for its misjudgment.

In an earlier blog [Justin Bieber et al], I considered the misuse by one musician of the works of another. The Beastie Boy’s case gives guidance to business owners who wish to incorporate the intellectual property of others in their marketing and other creative endeavors with impunity.

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     One of the benefits of registering your copyright in a work with the US Copyright Office is the opportunity to seek recovery of your attorney’s fees if you subsequently pursue an infringement action and are the “prevailing party.”

      Without registration prior to the alleged infringement having taken place, the weapon of being able to collect attorney’s fees from the defendant will be unavailable to you.  However, before you choose to sue another party for copyright infringement, given the language of the statute, be advised that should you be unsuccessful in your claim, you could find yourself paying the legal fees of your adversary.      

     That is exactly what happened to Mattel, the creator of Barbie dolls, in its eight-year unsuccessful copyright infringement battle with MGA Entertainment, creator of the Bratz dolls.   The Ninth Circuit upheld the trial court’s award requiring Mattel to pay MGA more than $137 million for its attorney’s fees. . Ouch!

     Section 505 of the Copyright Act (“the Act”) gives the trial judge the discretion to “award a reasonable attorney’s fee to the prevailing party. . . .”  In deciding whether to award attorney’s fees, a trial judge determines who prevailed and whether the award will further the purposes of the Act.  Merely because the plaintiff asserts claims that might be considered “objectively reasonable,” such will not thwart a prevailing defendant from successfully arguing for its attorney’s fees.

      Urging meritorious copyright defenses can be one way to advance the purpose of the Act, which is “to stimulate artistic creativity for the general public good.” In the battle of the dolls, the trial court decided that because MGA vigorously defended against Mattel’s claims, competition in the market place was allowed to advance.

      What to take away from Mattel’s expensive lesson? 

      Before pursuing a claim of copyright infringement, perform a careful analysis of what defenses the infringer is likely to assert and whether you can overcome them.  Also, be certain that you have exhausted all other avenues to resolve your dispute – including mediation or other alternative means of dispute resolution.   Remember, once you enter into litigation, it can be difficult to extricate yourself from the consequences of that choice.