Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 1 of 12 PageID #: 11444
`
`
`
`
`
`
`
`C.A. No. 15-419 WES
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF RHODE ISLAND
`_______________________________________
`
`
`
`
`)
`
`
`
`
`MARKHAM CONCEPTS, INC.; SUSAN GARRETSON;)
`and LORRAINE MARKHAM, individually and )
`in her capacity as Trustee of the Bill )
`and Lorraine Markham Exemption Trust
`)
`and the Lorraine Markham Family Trust, )
`
`
`
`
`
`
`
`
`)
`Plaintiffs,
`
`
`
`)
`
`
`
`
`
`
`
`
`)
`
`
`
`
`
`
`)
`
`v.
`
`
`
`
`
`
`
`
`)
`HASBRO, INC.; REUBEN KLAMER; DAWN
`)
`LINKLETTER GRIFFIN; SHARON LINKLETTER; )
`MICHAEL LINKLETTER; LAURA LINKLETTER
`)
`RICH; DENNIS LINKLETTER; THOMAS FEIMAN, )
`in his capacity as co-trustee of the
`)
`Irvin S. and Ida Mae Atkins Family
`)
`Trust; ROBERT MILLER, in his capacity )
`as co-trustee of the Irvin S. and Ida )
`Mae Atkins Family Trust; and MAX
`)
`CANDIOTTY, in his capacity as
`
`)
`co-trustee of the Irvin S. and Ida Mae )
`Atkins Family Trust,
`
`
`
`)
`
`
`
`
`
`
`
`
`)
`Defendants.
`
`
`
`)
`_______________________________________ )
`
`
`
`
`
`
`)
`
`
`REUBEN KLAMER,
`
`
`
`
`)
`)
`Counterclaim Plaintiff,
`)
`)
`v.
`
`
`
`
`
`)
`)
`MARKHAM CONCEPTS, INC., SUSAN
`
`)
`)
`GARRETSON and LORRAINE MARKHAM,
`
`)
`Counterclaim-Defendants.
`)
`_______________________________________ )
`
`
`
`
`
`
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 2 of 12 PageID #: 11445
`
`MEMORANDUM AND ORDER
`
`WILLIAM E. SMITH, District Judge.
`
`Before the Court are Defendants’ Motions for Attorneys’ Fees
`and Costs, ECF Nos. 258, 259, 265, through which all Defendants1
`ask this Court to exercise its discretion under 17 U.S.C. § 505 to
`award them — the uncontested prevailing parties — reasonable
`attorneys’ fees and costs.2 After considering the submissions and
`carefully reexamining the record, and acknowledging that these
`Motions present a close call, the Court DENIES Defendants’ Motions.
`
`Rather than recount the facts of the case, this Order assumes
`familiarity with the ones that precede it. Fees and costs are not
`owed automatically,3 and the Supreme Court has endorsed several
`factors to guide courts analyzing whether they are warranted. See
`Kirtsaeng v. John Wiley & Sons, Inc., 136 S.Ct. 1979, 1985 (2016).
`These
`include
`“frivolousness,
`motivation,
`objective
`unreasonableness (both in the factual and in the legal components
`
`
`1 Hasbro, Inc., Dawn Linkletter Griffin, Sharon Linkletter,
`Michael Linkletter, Laura Linkletter Rich, Dennis Linkletter,
`Thomas Feiman, Robert Miller, Max Candiotty, and Reuben Klamer.
`
`
`2 Defendants request fees and costs only as to Plaintiffs’
`third claim for relief.
`
`3 At least one circuit has gone as far as to hold that “the
`prevailing party in Copyright Act litigation is presumptively
`entitled to an award of fees under § 505,” and that the presumption
`is stronger still if the defendant prevails. Mostly Memories,
`Inc. v. For Your Ease Only, Inc., 526 F.3d 1093, 1099 (7th Cir.
`2008). The First Circuit has not adopted such a standard.
`
`2
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 3 of 12 PageID #: 11446
`
`of the case)[,] and the need in particular circumstances to advance
`considerations of compensation and deterrence.” Fogerty v.
`Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (internal citation
`and quotation marks omitted). Each is considered alongside the
`unchanging purposes of the Copyright Act, which focus on “enriching
`the general public through access to creative works.” Id. at 517-
`18. This is accomplished through “subsidiary aims” of the Act:
`“encouraging and rewarding authors’ creations while also enabling
`others to build on that work.” Kirtsaeng, 136 S.Ct. at 1986. The
`eventual question is whether the litigation furthered those
`purposes. No one factor is controlling, and neither is it a rigid
`formula, but objective unreasonableness is given “substantial
`weight,” see id. at 1983, 1988, and the Court starts there.
`
`Defendants say Plaintiffs advanced objectively unreasonable
`positions of law and fact, reflecting their “dubious” motivations4
`and justifying payment. See Def. Hasbro, Inc.’s Mot. for Att’ys’
`Fees and Costs (“Hasbro Mot.“) 3, ECF No. 259. In the end, this
`case boiled down to two dispositive questions: did Bill Markham
`create the Prototype (such that he could fairly be considered its
`author); and was the Prototype a work made for hire? Plaintiffs
`said yes and no, respectively. They asked for both a declaration
`
`
`4 Bad faith is unnecessary. See Latin Am. Music Co. v. Am.
`Soc’y of Composers, Authors & Publishers (ASCAP), 642 F.3d 87, 91
`(1st Cir. 2011).
`
`3
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 4 of 12 PageID #: 11447
`
`that Markham was the author and a ruling that they could pursue a
`statutory right to termination, which they would use to renegotiate
`a royalty agreement they found lacking. A finding that the
`Prototype was a work made for hire would doom Plaintiffs’ quest
`because these are excepted from termination rights, as would a
`finding that Markham was not the author. So success depended on
`proving both that Markham himself physically created the Prototype
`and that it was not made for another’s use and benefit. See 17
`U.S.C. § 304(c). This was a high bar to be sure, but the payoff
`if successful would no doubt have been substantial.
`After a bench trial, this Court resolved those questions,
`finding that the Prototype was indeed a work made for Reuben
`Klamer’s hire. It did so after applying the instance-and-expense
`test, which Plaintiffs argued did not hold post-Community for
`Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (“CCNV”).
`Having successfully asserted that it did, Defendants argue now –
`as they did before – that the First Circuit’s decision in Forward
`v. Thorogood, 985 F.2d 604 (1st Cir. 1993), foreclosed Plaintiffs’
`case from the start, and Plaintiffs’ argument to the contrary
`amounted to a far-fetched mischaracterization of the law.
`Throughout the case, Plaintiffs maintained that the Supreme
`Court’s decision in CCNV abrogated the instance-and-expense test
`followed in Forward. While ultimately unpersuasive to both this
`Court and the First Circuit, and subject to formidable opposition
`
`4
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 5 of 12 PageID #: 11448
`
`from Defendants, Plaintiffs’ argument was not without support.
`See, e.g., Melville B. Nimmer & David Nimmer, Nimmer on Copyright
`§ 9.03[D] (2019)5. And while this Court (and the Panel)6 was bound
`by First Circuit precedent holding otherwise, see Mag Jewelry Co.
`v. Cherokee, Inc., 496 F.3d 108, 124 (1st Cir. 2007) (reversing
`district court decision denying attorneys’ fees and costs where
`“the legal principle at the core of their argument [was], as noted
`earlier, well established”), the Court hesitates to say that
`Plaintiffs “argue[d] for an unreasonable extension of copyright
`protection,” Matthews v. Freedman, 157 F.3d 25, 29 (1st Cir. 1998)
`(emphasis added). See Universal Instruments Corp. v. Micro Sys.
`Eng’g, Inc., 799 F. App’x 43, 46 (2d Cir. 2020) (holding that it
`was not unreasonable for a party “to try to push through the door
`
`
`5 Hasbro reduces Nimmer’s take to merely his own “personal
`musings.” Def. Hasbro, Inc.’s Reply in Supp. of Its Mot. for
`Att’ys’ Fees and Costs 8, ECF No. 279. Generalist courts –
`including our Supreme Court – often cite Nimmer on Copyright when
`analyzing this niche and complex area of the law. See, e.g., Feist
`Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)
`(citing Nimmer on Copyright twelve times); Perea v. Ed. Cultural,
`Inc. 13 F.4th 43, 52 (1st Cir. 2021); Markham Concepts, Inc. v.
`Hasbro, Inc., 1 F.4th 74, 83 (1st Cir. 2021) (while remaining
`“skeptical” of Plaintiffs’ position, acknowledging that Plaintiffs
`had at least one “influential adherent” on their side).
` Offering even more explanation, the First Circuit said that,
`even if not bound by precedent, it would be “disinclined to
`[abrogate a prior panel opinion] in this case,” remaining
`“skeptical that the Supreme Court, in construing the 1976 Act,
`casually and implicitly did away with a well-established test under
`a different Act.” Markham Concepts, 1 F.4th at 82-83 (citing
`circuit opinions holding similarly). This, however, does not
`necessarily mean that the position was unreasonable.
`
` 6
`
`5
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 6 of 12 PageID #: 11449
`
`that [the court] left open,” despite that it disagreed with the
`position); see also Order Denying Mot. to Amend 2, ECF No. 250
`(“Of course it is the Court of Appeals’s prerogative to accept
`this argument and thereby change the law it applied in Forward.”).
`The Court thus declines to award fees and costs on this basis.7
`See Lotus Dev. Corp. v. Borland Int’l, 140 F.3d 70, 75 (1st Cir.
`1998) (considering awards against “a plaintiff, who, in a
`particular case, may have advanced a reasonable, albeit
`unsuccessful, claim”); see also Photographic Illustrators Corp. v.
`Orgill, Inc., No. CV 14-11818-PBS, 2020 WL 3051774, at *1 (D. Mass.
`June 8, 2020) (declining to award attorneys’ fees where party
`raised “novel argument that was not objectively baseless”).
`Defendants’ better argument is that Plaintiffs’ case was
`factually weak. Defendants had evidence supporting multiple paths
`to victory, and under any one Plaintiffs’ case would fold. This
`is a closer call; but, because in the end the case turned on the
`Court’s interpretation of the evidence, the Court declines to award
`fees and costs on this ground, too.
`Among other theories, Defendants argued that the Prototype
`was a work made for hire for Klamer and now submit that it was
`
`
`7 It is at least somewhat telling that “[t]he Supreme Court
`has also been presented with, but has declined to take up, the
`question of whether [CCNV] abrogated the instance and expense test
`as to commissioned works,” id. at 83 n.4; that other litigants
`have raised this argument lends some support to the conclusion
`that Plaintiffs’ position was reasonable.
`
`6
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 7 of 12 PageID #: 11450
`
`unreasonable for Plaintiffs to argue otherwise. Defendants had
`evidence to support this theory, including witnesses Grace Falco
`Chambers and Leonard Israel, who testified at various points in
`the litigation that their work was done at Klamer’s instance and
`expense. And Defendants stress that Plaintiffs’ counsel’s
`admission that Chambers and Israel were Markham’s employees doomed
`Plaintiffs’ case because they – the Prototype’s true authors –
`created it as a work-for-hire, which is doubly fatal in that it
`also proved that Markham was not the Prototype’s author.
`But that concession only got Defendants part of the way.
`Plaintiffs called Chambers’ and Israel’s testimony incredible as
`to the extent of their contributions, and they had some evidence
`to rebut it. For example, Plaintiffs pointed to contemporaneous
`documents as evidence that Markham was the sole creator. These
`included the Assignment Agreement and letters between Markham and
`Klamer (the impetus for these letters being disputes stemming from
`credit given in a trade publication). See Findings of Fact and
`Conclusions of Law 12-14, ECF No. 240. In further defense,
`Plaintiffs argued that the Assignment Agreement showed that the
`Prototype was not intended to be a work made for hire, overcoming
`any presumption that it was one. See Playboy Enterprises, Inc. v.
`Dumas, 53 F.3d 549, 554 (2d Cir. 1995) (“That presumption can be
`overcome, however, by evidence of a contrary agreement, either
`written or oral.” (internal citation omitted)). Defendants had
`
`7
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 8 of 12 PageID #: 11451
`
`plenty of responses to this evidence, including that the Assignment
`Agreement was hollow legalese,8 that nothing spoke directly to
`physical creation, and that, in any event, it was all small proof
`(if proof at all) measured against Chambers’ and Israel’s
`testimony.
`After a close review of the record, the Court again cannot
`say that Plaintiffs pursued a factually unreasonable case. See
`Airframe Sys., Inc. v. L-3 Commc’ns Corp., 658 F.3d 100, 110 (1st
`Cir. 2011) (affirming district court’s denial of fees, even where
`the claims failed at the summary judgment stage because of a lack
`of admissible evidence, emphasizing that it is a matter of the
`district court’s discretion). Both sides came to trial with
`evidence to support their claims on all theories. Plaintiffs had
`much to overcome, including surmounting Markham’s admission in a
`decades-old deposition that Chambers, Israel, and his wife worked
`on the game, as reflected in the invoice submitted to secure
`reimbursement. See Hasbro Mot. 16. But Plaintiffs did not
`purposefully obscure relevant evidence (contrary to Defendants’
`argument). See Mag Jewelry Co., 496 F.3d at 123 (reversing
`district court denial of fees and costs because it was “apparent
`
`
`8 Some of the litigated language included that Markham
`“invented, designed[,] and developed” the game, and that, at Link
`Research Corporation’s request, Markham would pursue any copyright
`“to which he may be entitled as the inventor, designer, and
`developer of the [g]ame.” See Findings of Fact and Conclusions of
`Law 10, 23, ECF No. 240.
`
`8
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 9 of 12 PageID #: 11452
`
`that the inadequacies in [the company’s] showings are traceable to
`facts of which the company had full knowledge at the time of
`summary judgment”). Neither did Plaintiffs make false assertions.
`See Webloyalty.com, Inc. v. Consumer Innovations, LLC, 388 F. Supp.
`2d 435, 444 (D. Del. 2005) (awarding fees and costs where, “on the
`record presented, [the] assertions were’ so outlandish as to offend
`any reasonable concept of the truth,” “wast[ing] the resources of
`its opponent and this court by persisting with an objectively
`unreasonable strategy”).
`Rather, Defendants’ success turned on how the factfinder
`interpreted the evidence and assessed credibility. Defendants
`spend much of their energy relitigating the merits with the benefit
`of this Court’s Findings of Fact and Conclusions of Law, see, e.g.,
`Def. Reuben Klamer’s Reply in Supp. of His Mot. for an Award of
`Att’ys’ Fees and Costs 7-11, ECF No. 285; Def. Hasbro, Inc.’s Reply
`in Supp. of Its Mot. for Att’ys’ Fees and Costs 3-4, ECF No. 279,
`but unpersuasive arguments are not necessarily unreasonable ones.
`At no point before the issuance of the Findings of Fact and
`Conclusions of Law did Plaintiffs (or Defendants) know how the
`Court would weigh the evidence, including Chambers’ and Israel’s
`testimony.9 See InvesSys, Inc. v. McGraw-Hill Companies, Ltd.,
`
`
`9 For this reason, Hasbro’s Rule 11 letter, in which Hasbro
`contended that “the testimony of Chambers, Israel and Klamer had
`definitively established” that Plaintiffs “could not support a
`claim for termination” does little to answer the relevant
`
`9
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 10 of 12 PageID #: 11453
`
`369 F.3d 16, 21 (1st Cir. 2004) (emphasizing that “reasonableness
`of the original claim ha[s] to rest on what [the party] knew when
`he made and pressed his claim and not merely on the unfavorable
`outcome”); see also Latin Am. Music Co., Inc. v. Spanish Broad.
`Sys., Inc., No. 20-2332-CV, 2021 WL 4536898, at *2 (2d Cir. Oct.
`5, 2021) (considering claims’ objective unreasonableness and
`frivolousness based on “the time they were filed and litigated”
`and upholding fees when the court “expressly warned” the plaintiffs
`at summary judgment). Taking the words of the First Circuit, it
`was the “district court’s job to sort through the evidence and
`decide what and who was credible.” Markham Concepts, Inc. v.
`Hasbro, Inc., 1 F.4th 74, 84 (1st Cir. 2021); see Kirtsaeng, 136
`S.Ct. at 1988 (“Courts every day see reasonable defenses that
`ultimately fail (just as they see reasonable claims that come to
`nothing); in this context, as in any other, they are capable of
`distinguishing between those defenses (or claims) and the
`objectively unreasonable variety.”); Small Justice LLC v. Xcentric
`Ventures LLC, 873 F.3d 313, 329 (1st Cir. 2017) (“[T]he trial court
`is in the best position to gauge the bona fides of a request for
`fees.” (internal citation and quotation marks omitted)).
`
`
`questions. Def. Hasbro, Inc.’s Mot. for Att’ys’ Fees and Costs 5,
`ECF No. 259. There is no question from the Court’s point of view
`that once Chambers and Israel testified it was difficult to imagine
`a scenario where Plaintiffs would defeat the work-for-hire
`argument, but Plaintiffs could not know how the Court was viewing
`the testimony.
`
`10
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 11 of 12 PageID #: 11454
`
`From the Court’s vantage, both sides raised plausible
`arguments and Plaintiffs’ claim, though unsuccessful, was not so
`weak as to be objectively unreasonable to pursue. See Kirtsaeng,
`136 S.Ct. at 1988 (carefully distinguishing liability from
`reasonableness and asking whether a party “made serious
`arguments”); Overseas Direct Imp. Co. v. Fam. Dollar Stores Inc.,
`No. 10 CIV. 4919 JGK, 2013 WL 5988937, at *2 (S.D.N.Y. Nov. 12,
`2013) (explaining that “lack of success on the merits, without
`more, does not establish that the non-prevailing party’s position
`was objectively unreasonable”).10
`Objective weakness is not the end of the inquiry, see
`Matthews, 157 F.3d at 29 (“Depending on other circumstances, a
`district court could conclude that the losing party should pay
`even if all of the arguments it made were reasonable.”), but the
`Court makes quick work of those grounds that remain. Because the
`case was not objectively unreasonable, it follows that it was not
`frivolous. Nothing in the record convinces the Court that
`Plaintiffs proceeded with an improper motivation that justifies an
`
`
`10 None of Defendants’ arguments about Plaintiffs’ litigation
`conduct sway in favor of an award, including Hasbro’s grievance
`about its efforts to remove Plaintiffs’ original counsel from the
`case.
`
`
`11
`
`

`

`Case 1:15-cv-00419-WES-PAS Document 295 Filed 11/05/21 Page 12 of 12 PageID #: 11455
`
`award, and neither would an award serve any meaningful deterrence
`effect.11
`For those reasons, the Court concludes that the litigation
`furthered the purposes of the Copyright Act and DENIES Defendants’
`Motions for Attorneys’ Fees and Costs, ECF Nos. 258, 259, 265.
`
`IT IS SO ORDERED.
`
`
`
`William E. Smith
`District Judge
`Date: November 5, 2021
`
`
`
`11 For his part, Klamer claims the equities favor awarding him
`his fees in the interest of compensation because he, unlike his
`compatriots, proceeded through the litigation as a single
`individual, and one in frail health. See Def. Reuben Klamer’s
`Reply in Supp. of Mot. for an Award of Att’ys’ Fees and Costs 13,
`17, ECF No. 285. (The Court is sorry to learn of Reuben Klamer’s
`recent death. See Katharine Q. Seelye, Reuben Klamer, Creator of
`the
`Game
`of
`Life,
`Dies
`at
`99,
`available
`at
`https://www.nytimes.com/2021/09/20/business/reuben-klamer-
`dead.html (last visited Nov. 5, 2021).) On balance, this itself
`does not weigh heavily enough in favor of an award.
`
`12
`
`