Shame on You Productions, Inc. v. Banks

Following dismissal of copyright infringement claim concerning 2014 film “Walk of Shame,” Ninth Circuit affirms nearly  $319,000 award of attorneys’ fees and costs to defendants based primarily on objective unreasonableness.

Shame on You Productions Inc. sued actress Elizabeth Banks; her husband and producing partner, Max Handelman; and other defendants associated with the film “Walk of Shame” for allegedly infringing the copyright in the screenplay titled “Darci’s Walk of Shame,” written by SOYP’s president Dan Rosen. SOYP alleged that it had sent the screenplay to Banks and Handelman in 2007 with the desire for Banks to star in the production, the parties subsequently met but Banks and Handelman did not follow up, and defendants released the film “Walk of Shame” seven years later.

Prior to filing suit, SOYP demanded that defendants “produce ‘all drafts of the subject screenplay, development notes, electronic notes or email communications” regarding “Walk of Shame.” When they declined to do so, SOYP filed suit. Following contentious discovery disputes involving several motions to compel, the district court granted defendants’ motion for judgment on the pleadings, finding “as a matter of law there was no substantial similarity between the two works,” and dismissing the copyright infringement claim with prejudice and the state law breach of implied contract claim without prejudice. Finding the copyright claim “objectively unreasonable,” the district court awarded defendants $314,669.75 in fees and $3,825.15 in costs. On SOYP’s appeal, the Ninth Circuit affirmed.

SOYP argued that the district court’s award failed to account for the Supreme Court’s 2016 decision in Kirtsaeng v. John Wiley & Sons, Inc., which was issued two months following the district court’s award. The Ninth Circuit disagreed, concluding that “Kirtsaeng did not effect a significant change in law” but merely provided “additional guidance respecting the application of § 505.” As it stated, the factors to be considered by courts under 17 U.S.C. § 505 remained the same after Kirtsaeng: frivolousness, plaintiff’s motivation, objective unreasonableness (both factual and legal) and the need to advance considerations of compensation and deterrence. The only difference, according to the court, was that the objective unreasonableness factor should be accorded “substantial weight.”

The district court’s determination of SOYP’s objective unreasonableness was grounded on “the distinct lack of similarity between the two works.” As an initial matter, the district court found that the “walk of shame” plot concept is not protectable and that many of the similarities alleged by SOYP were scènes à faire flowing from that basic premise. While noting some broad similarities, the district court found that the two works told “fundamentally different stories” with different plots, themes, dialogue, moods, settings, pace and characters. For example, while both lead characters overcome obstacles to attend “important events,” the events are distinct: a post-wedding brunch at the Four Seasons in Maui in “Darci’s Walk of Shame” and a morning news broadcast in “Walk of Shame.” On appeal, SOYP argued that the district court’s finding regarding substantial similarity was “inherently subjective.” The Ninth Circuit disagreed, explaining that because SOYP could not satisfy the extrinsic test — an “objective comparison of specific expressive elements” — the intrinsic test’s subjective inquiry was not required to be “left to the jury,” and the district court’s finding that the two works were not substantially similar was “based entirely on the objective extrinsic test.”

As to the remaining § 505 factors, the Ninth Circuit affirmed that they did not outweigh the objective unreasonableness of SOYP’s infringement claim. Notably, the district court found that SOYP acted in bad faith by repeatedly failing to produce a copy of the script for “Darci’s Walk of Shame,” including in contravention of court order. The district court characterized SOYP’s conduct as “obstructionist,” which raised an inference that SOYP knew its claim was meritless and sought only to force defendants into settlement.

Finally, the Ninth Circuit held that because SOYP’s state law claim for breach of implied contract also turned on whether or not defendants copied “Darci’s Walk of Shame,” that claim arose out of the same facts and circumstances as the infringement claim, and the district court thus did not err in holding that the claims were sufficiently related so as not to apportion fees between them.

Summary prepared by Frank D’Angelo and Mary Jean Kim