Monkey Business: Copyright Infringement Claim Backfires for Lawyer-Plaintiff


he creators of the short-lived sitcom Animal Practice walked away with a smash-hit in the courtroom:  dismissal of a claim of copyright infringement and an award of over $66,000 in fees and costs, to be paid by the plaintiff that asserted the claim.  The dispute in DuckHole, Inc. v. NBC Universal Media LLC et al. centered on the claim that a treatment for a sitcom entitled PETS was substantially similar to the NBC show, but Judge Beverly Reid O’Connell disagreed to such an extent that not only did she throw out the claim, she opined that the plaintiff should never have filed the lawsuit to begin with.  While the dismissal of the claim on the merits reflects the commonality with which such claims are dismissed at an early stage, Judge O’Connell’s decision serves as a strong reminder that the risk of a fee award under the Copyright Act may be present in nearly any copyright lawsuit and may be a factor to be weighed by both plaintiffs and defendants involved in copyright disputes.

Plaintiff’s CEO and Director, Paul J. Andre, created the concept forPETS, described by Mr. Andre as “a sitcom set in a veterinary clinic, and centered on a brilliant veterinarian that prefers the company of animals to people,” in 2010 and registered a seven-page treatment for the show with the Writer’s Guild of America on December 27, 2010.  Mr. Andre, who is also an intellectual property litigator focused on patent law, subsequently assigned all rights in PETS to plaintiff and, on October 7, 2012, registered the treatment with the U.S. Copyright Office in plaintiff’s name.  The treatment includes a plot summary, character list, set list and compilation of episode ideas, including ideas involving a Halloween costume contest for pets at the clinic and a dog eating chocolate, but does not include a script or any sample dialogue.

Defendants are the producers and distributor of the now-cancelledAnimal Practice, a sitcom set in a veterinary hospital and centered on its chief surgeon, who has difficulty getting along with pet owners and fellow staff.  Two months after asserting an initial demand, DuckHole filed its action for copyright infringement on November 26, 2012, claiming (inter alia) that Animal Practice’s “concept of centering on a veterinarian that is good with animals but not so good with people, and the setting in a veterinarian clinic is substantially identical, and at least derivative of the concept and setting in PETS.”

Both before DuckHole filed suit and afterward, the defendants urged DuckHole to drop the claim.  After the lawsuit was filed, the defendants sent Mr. Andre a detailed letter setting forth controlling law and providing a substantial similarity analysis.  The letter also explained that NBC and its affiliated parties would be entitled to seek attorneys’ fees and costs if they prevailed in the case.  Nonetheless, DuckHole declined to dismiss the action, stressing to the court in its briefing the significance of the October 24, 2012 episode of Animal Practice, which featured a Halloween costume contest for pets at the hospital and a dog eating chocolate.

In granting defendants’ motion to dismiss the action for failure to state a claim, the court took judicial notice of the content of Animal Practicefrom DVDs lodged with the court, the treatment for PETS filed with the Copyright Office, and “the common elements of veterinary hospitals and sitcoms.”  With respect to veterinary hospitals, these common elements included the setting of an operating room, and examining room, a lobby and pets; with respect to sitcoms, these common elements included tone and plot ideas such as romantic relationships. The court determined that there was “no similarity, much less substantial similarity, between any expressive elements of the works.”  Echoing defendants’ counsel’s prior letter to Mr. Andre, the court found that “a show about an animal hospital is itself too generic to be protectable,” and the elements that DuckHole alleged to appear inAnimal Hospital were scenes a faire flowing naturally from the generic idea of a show about an animal hospital.  In their expressions – even in the expression of the Halloween costume contest and pet eating chocolate story fragments – the works were “wholly different,” containing “no similarity, much less substantial similarity.”

Unlike in most lawsuits in the United States (in which each side is to pay its own legal fees), Section 505 of the Copyright Act provides for an award of fees and costs to the prevailing party if certain facts are present. In granting defendants’ motion for attorneys’ fees and costs, Judge Beverly Reid O’Connell considered the following five factors set forth by the Supreme Court in Fogerty v. Fantasy: (1) defendants’ degree of success on the claim, (2) the frivolousness of plaintiff’s claim, (3) the objective reasonableness of plaintiff’s factual and legal arguments, (4) plaintiff’s motivation in bringing the lawsuit, and (5) the need for compensation and deterrence.  The court readily noted that the defendants prevailed against DuckHole’s claim and that DuckHole was objectively unreasonable in pursuing the action given that the only similarities between the works related to generic, unprotectable elements.  (The court declined to discuss frivolousness, noting that such a finding is not essential to an award of fees.)  On the fourth and fifth factors, the court spent more time in its analysis, taking care to point out that Mr. Andre was a partner in the intellectual property group of a major law firm and had been educated repeatedly by the defendants on the law – in addition to the risk of being held responsible to pay legal fees under Section 505 of the Copyright Act.  The court was not moved by DuckHole’s argument that at least one of the defendants had deep pockets for paying its own fees, noting that “[d]eterring non-meritorious lawsuits against defendants seen as having ‘deep pockets’ and compensating parties that must defend themselves against meritless claims are both laudable ends.”

Finding the hours expended (151.1 hours) and the rate charged for the work ($580/hour for a partner and $380/hour for an associate) to be reasonable, the court concluded by granting defendants a total of $66,070.51 in attorneys’ fees and costs, which amount constituted the entirety of defendants’ request less $500 in costs incurred from copying the DVDs for Animal Practice for submission to the court (which the court asserted defendants’ counsel could have obtained from them for free).

The decision in the case reaffirms the rarity with which copyright lawsuits claiming infringement of original treatments succeed, and the reason.  Treatments are usually short on protectable expression, and (even if copying did in fact happen) afford ample room for potential defendants to expand upon the original and thus insulate their own works from infringement claims.  In this case, not even the basic characters or plot lines were present or expressed in the same way as DuckHole’s, which suggested no taking in the first place, and thus – clearly – no infringement.

The greater lesson of the ruling may be the one inherent in the October order awarding attorneys’ fees and costs.  The possibility that a plaintiff may not be able to walk away scot-free after losing a lawsuit provides a significant disincentive against pushing too hard on tenuous claims that a television or motion picture “rips off” the plaintiff’s work.  It also provides strategic guidance for defendants that may be weighing the cost of settling versus litigating against a plaintiff who may be able to afford to pay an award of fees.  The court’s commentary applauding the defendants’ efforts to avoid litigation by educating DuckHole also suggests that it may be worth taking the time to lead stubborn claimants in meritless copyright infringement claims to water — whether or not they choose to drink.

Filed in: Legal Blog

December 9, 2013