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`APPENDIX
`APPENDIX
`
`

`

`TABLE OF CONTENTS
`Opinion in the United States Court of Appeals
`for the First Circuit (June 22, 2023) ................... 1a
`Opinion in the United States District Court for
`the District of Rhode Island (Nov. 5, 2021) ....... 32a
`
`
`
`

`

`
`
`1a
`
`APPENDIX A
`United States Court of Appeals
`For the First Circuit
`_____
`
`No. 19-1927
`
`
`MARKHAM CONCEPTS, INC.; LORRAINE
`MARKHAM, individually and in her capacity as
`trustee of the Bill and Lorraine Markham
`Exemption Trust and the Lorraine Markham Family
`Trust; SUSAN GARRETSON,
`
`Plaintiffs, Appellants,
`
`v.
`
`HASBRO, INC.; BEATRICE PARDO, in her capacity
`as successor cotrustee of the Reuben B. Klamer
`Living Trust; PAUL GLASS, in his capacity as
`successor co-trustee of the Reuben B. Klamer Living
`Trust; 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 cotrustee of the
`Irvin S. and Ida Mae Atkins Family Trust; MAX
`CANDIOTTY, in his capacity as co-trustee of the
`Irvin S. and Ida Mae Atkins Family Trust,
`Defendants, Appellees, IDA MAE ATKINS,
`
`Defendant.
`
`
`No. 21-1957
`
`
`MARKHAM CONCEPTS, INC.; LORRAINE
`
`

`

`2a
`
`MARKHAM, individually and in her capacity as
`trustee of the Bill and Lorraine Markham Exemption
`Trust and the Lorraine Markham Family Trust;
`SUSAN GARRETSON,
`
` Plaintiffs, Appellees
`v.
`HASBRO, INC., Defendant, Appellant.
`BEATRICE PARDO, in her capacity as successor co-
`trustee of the Reuben B. Klamer Living Trust; PAUL
`GLASS, in his capacity as successor co-trustee of the
`Reuben B. Klamer Living Trust; 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; MAX CANDIOTTY, in his
`capacity as co-trustee of the Irvin S. and Ida Mae
`Atkins Family Trust; IDA MAE ATKINS,
`Defendants.
`
`No. 21-1958
`MARKHAM CONCEPTS, INC.; LORRAINE
`MARKHAM, individually and in her capacity as
`trustee of the Bill and Lorraine Markham Exemption
`Trust and the Lorraine Markham Family Trust;
`SUSAN GARRETSON,
`Plaintiffs, Appellees
`v.
`BEATRICE PARDO, in her capacity as successor
`co-trustee of the Reuben B. Klamer Living Trust;
`
`

`

`3a
`
`PAUL GLASS, in his capacity as successor co-trustee
`of the Reuben B. Klamer Living Trust,
`Defendants, Appellants
`HASBRO, INC., 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; MAX CANDIOTTY, in his capacity as co-
`trustee of the Irvin S. and Ida Mae Atkins Family
`Trust; IDA MAE ATKINS,
`Defendants.
`_____
`APPEALS FROM THE UNITED STATES
`DISTRICT COURT FOR THE DISTRICT OF
`RHODE ISLAND
`[Hon. William E. Smith, U.S. District Judge]
`_____
`Before
`Kayatta, Lipez, and Thompson, Circuit Judges.
`_____
`Patricia L. Glaser, with whom Erica J. Van Loon,
`Joshua J. Pollack, Nixon Peabody LLP, Thomas P.
`Burke Jr., and Glaser Weil Fink Howard Avchen &
`Shapiro LLP were on brief, for defendants-appellants
`Beatrice Pardo and Paul Glass.
`Joshua C. Krumholz, with whom Courtney L.
`Batliner, Mark T. Goracke, Holland & Knight LLP,
`
`

`

`4a
`
`Patricia K. Rocha, and Adler Pollock & Sheehan PC
`were on brief, for defendant-appellant Hasbro, Inc.
`David A. Cole, with whom John T. Moehringer
`and Cadwalader, Wickersham & Taft LLP were on
`brief, for plaintiffs-appellees.
`_____
`June 22, 2023
`_____
`LIPEZ, Circuit Judge. In this copyright action
`involving ownership rights to the classic board game,
`The Game of Life, conveyed more than six decades
`ago, the prevailing defendants seek attorney’s fees
`from the unsuccessful plaintiffs. The district court
`denied fees for the trial-level proceedings, and the
`defendants claim on appeal that the court abused its
`discretion in doing so. The defendants also moved in
`this court for appellate attorney’s fees. The Copyright
`Act of 1976 permits the award of reasonable fees and
`costs to a prevailing party, see 17 U.S.C. § 505, and
`the Supreme Court has endorsed a set of nonexclusive
`factors to be considered by courts in evaluating
`whether to award fees, see Fogerty v. Fantasy, Inc.,
`510 U.S. 517, 534 & n.19 (1994). After carefully
`considering those factors and other aspects of the
`record, we affirm the district court’s decision to deny
`fees and, primarily for the same reasons, decline to
`award fees for the appeal.
`I.
`As detailed in our opinion on the merits, this case
`arose from a long-running dispute between Reuben
`Klamer, a toy developer who originated the idea for
`The Game of Life, and Bill Markham, a game designer
`whom Klamer asked to design and build the game
`
`

`

`5a
`
`prototype. See Markham Concepts, Inc. v. Hasbro,
`Inc., 1 F.4th 74, 77-78 (1st Cir. 2021), cert. denied, 142
`S. Ct. 1414 (2022). The game was a huge success, and
`for decades following its debut in 1960, Markham and
`Klamer clashed over who should receive primary
`credit for its creation. In general, Markham “felt that
`he was not given proper public recognition for his role”
`and that the royalty he received was “unfairly low.”
`Id. at 78-79.
`Markham died in 1993. This case was brought by
`his successors-in-interest against Klamer, who has
`since died,1 and others (including Hasbro, Inc., the
`company that now holds rights to The Game of Life)
`in an attempt, inter alia, to renegotiate the original
`assignment of rights in the game.2 As the district
`court observed, the plaintiffs’ copyright claim “boiled
`down to two dispositive questions: did Bill Markham
`create the [p]rototype (such that he could fairly be
`considered its author); and was the [p]rototype a work
`
`1 Klamer died in September 2021, after we issued our merits
`decision but before the district court ruled on the fee requests. In
`Klamer’s place, this action has been pursued by the co-trustees
`of the Reuben B. Klamer Living Trust. For convenience, we refer
`to Klamer when discussing arguments made in his briefs and
`motions. The Markham parties are Markham’s widow, daughter,
`and Markham Concepts, Inc.
`2 The litigation originally was brought by the Markham parties
`primarily as a contract action against Hasbro seeking
`reinstatement of their royalty payments, which had stopped
`because of an issue with an escrow arrangement. They
`subsequently amended their complaint to add additional causes
`of action against Klamer and other defendants, including the
`copyright claim adjudicated by the district court and addressed
`in our merits decision. See Markham Concepts, 1 F.4th at 77. The
`escrow issue was resolved, and the parties stipulated to
`dismissal of the non-copyright claims.
`
`

`

`6a
`
`made for hire?” Markham Concepts, Inc. v. Hasbro,
`Inc., No. 15-419 WES, 2021 WL 5161772, at *1 (D.R.I.
`Nov. 5, 2021).
`Answering those questions required application of
`the Copyright Acts of 1909 and 1976. Under the
`Copyright Act of 1976 (“1976 Copyright Act”), authors
`may have “the power to terminate the grant of a
`copyright after a certain period of time, see 17 U.S.C.
`§§ 203, 304(c), 304(d), thereby permitting them to
`extricate themselves from ‘ill-advised’ grants made
`before the ‘true value’ of their work was apparent.”
`Markham Concepts, 1 F.4th at 79 (quoting Mills
`Music, Inc. v. Snyder, 469 U.S. 153, 172-73 (1985)
`(footnote omitted)). However, such “termination
`rights” do not extend to “work[s] made for hire.” 17
`U.S.C. § 304(c). Whether The Game of Life was “made
`for hire” is governed by the Copyright Act of 1909
`(“1909 Act”), 17 U.S.C. § 26 (repealed 1978). See
`Markham Concepts, 1 F.4th at 81.
`Following a bench trial that included testimony
`from Klamer and two employees of Markham’s
`business who had worked on The Game of Life, the
`district court concluded that the prototype was indeed
`a work for hire created for Klamer. See Markham
`Concepts, Inc. v. Hasbro, Inc., 355 F. Supp. 3d 119, 130
`(D.R.I. 2019). That decision meant that Markham was
`not the prototype’s author for copyright purposes,
`foreclosing
`his
`successors-in-
`interest
`from
`terminating an assignment agreement that had been
`in effect, with minor adjustments, since 1959. Id.; see
`also Markham Concepts, 1 F.4th at 79.3
`
`3 Markham’s assignment agreement (“the 1959 Assignment
`Agreement”) was with Link Research Corporation, co-founded by
`Klamer and Art Linkletter (a well-known radio and television
`
`

`

`7a
`
`In reaching its decision, the district court relied—
`over the plaintiffs’ objection—“instance and expense”
`test that had long been used to evaluate whether a
`commissioned work subject to the 1909 Act was made
`for hire. See Markham Concepts, 355 F. Supp. 3d at
`127-30.4 The district court did not address the
`defendants’ alternative theory that the prototype
`
`personality). The agreement, inter alia, required Markham to
`assign to Link any copyright, patent, or trademark rights “to
`which he may be entitled as the inventor, designer and developer
`of the [g]ame.” Markham Concepts, 1 F.4th at 85. Link separately
`entered into a license agreement with the Milton Bradley
`Company, giving Milton Bradley exclusive rights to make and
`sell The Game of Life in exchange for a six percent royalty on
`sales. Id. at 78. Hasbro subsequently acquired Milton Bradley,
`along with the rights to the game. Under Markham’s initial
`agreement with Link, he received thirty percent of Link’s six
`percent royalty (i.e., 1.8 percent of total royalties). Id. Although
`Markham’s royalty on non-U.S. sales has varied over time, see
`infra, the domestic percentage has remained the same.
`4 The 1909 Act codified the longstanding principle that “a work
`created by an employee belongs to the employer, who is then
`viewed as the author and copyright holder.” Markham Concepts,
`1 F.4th at 79-80. Courts initially limited this “work for hire”
`concept to “‘the traditional employer-employee relationship,’ that
`is, to ‘a work created by an employee acting within the scope of
`employment.’“ Id. at 80 (quoting Forward v. Thorogood, 985 F.2d
`604, 606 (1st Cir. 1993)). However, the work-for-hire concept was
`later expanded via the instance and expense test to include
`works created by independent contractors when the hiring party
`provided both the impetus (the “instance”) and funding (the
`“expense”) for the work. See id.; see also, e.g., Marvel Characters,
`Inc. v. Kirby, 726 F.3d 119, 139 (2d Cir. 2013) (explaining that
`“instance” “refers to the extent to which the hiring party provided
`the impetus for, participated in, or had the power to supervise
`the creation of the work”). The 1976 Copyright Act contains an
`explicit, two-part definition for works for hire that applies to
`works created on or after January 1, 1978. See 17 U.S.C. § 101;
`see also Markham Concepts, 1 F.4th at 80.
`
`

`

`8a
`
`qualified as a work for hire because it was created for
`Markham by his employees within a traditional
`employer-employee relationship—which also would
`foreclose termination rights for the Markham parties.
`On appeal, we endorsed both the district court’s
`approach and its outcome. We decided that courts
`within the First Circuit remain bound by our instance
`and expense precedent, see Markham Concepts, 1
`F.4th at 81-83, and held that “the evidence amply
`support[ed] the district court’s conclusion that the
`game was created at the instance and expense of
`Klamer” and was thus a work for hire, id. at 86.5
`Months after we issued our decision on the merits,
`the district court denied the defendants’ pending
`motions for attorney’s fees and costs for the trial-level
`proceedings. See Markham Concepts, 2021 WL
`5161772, at *5.6 Hasbro and Klamer filed separate
`appeals of that ruling,7 and each also filed a motion
`
`5 As described in our opinion on the merits, some cases suggest
`that the parties in a work-for-hire relationship can agree that
`authorship rights will belong to the work’s actual creator rather
`than to the person at whose instance and expense the work is
`made. See Markham Concepts, 1 F.4th at 85 & n.7. However,
`work-for-hire status is presumed when the elements of the
`instance and expense test are met, and “courts generally demand
`clear and specific evidence” to rebut that presumption. Id. Both
`the district court and our court held that the assignment
`agreement between Markham and Link did not overcome the
`work-for-hire presumption. See id. at 85-86.
`6 Hasbro requested fees in the amount of $1,951,323.63 and
`$10,256.45 in costs, plus $9,112.36 for travel. Klamer requested
`fees in the amount of $1,827,393.50 plus costs of $38,953.81.
`7 Multiple defendants associated with Art Linkletter also were
`defendants in the copyright action and requested $583,709.50 in
`attorney’s fees in the district court. They did not appeal the
`denial of those fees and have not requested appellate fees.
`
`

`

`9a
`
`for an award of attorney’s fees on appeal.8 We
`subsequently consolidated the district court fee
`appeals with the motions for appellate fees.
`II.
`
`A. Legal Principles
`Section 505 of the 1976 Copyright Act allows a
`court, in its discretion, to award reasonable attorney’s
`fees to a prevailing party. See 17 U.S.C. § 505.9 The
`statute “requir[es] an ‘evenhanded’ approach under
`which
`‘[p]revailing
`plaintiffs
`and
`prevailing
`defendants are to be treated alike.’“ Airframe Sys.,
`Inc. v. L-3 Commc’ns Corp., 658 F.3d 100, 108 (1st Cir.
`2011) (quoting Fogerty, 510 U.S. at 521, 534) (second
`alteration in original). Although “[t]here is no precise
`rule or formula for” determining whether to award
`attorney’s fees under § 505, Fogerty, 510 U.S. at 534
`(quoting Hensley v. Eckerhart, 461 U.S. 424, 436
`(1983)), the Supreme Court has endorsed “several
`nonexclusive factors to guide” a court’s decision:
`“‘frivolousness, motivation, objective unreasonable-
`ness (both in the factual and in the legal components
`
`
` 8
`
` Hasbro seeks $271,674.20 in attorney’s fees on appeal, and
`Klamer seeks $238,086.34 in appellate attorney’s fees.
`9 Although the 1909 Act applies to the substantive issues in this
`case, the defendants sought fees under § 505 of the 1976
`Copyright Act rather than under the comparable provision of the
`1909 Act, § 116. In its motion for appellate fees, Hasbro notes
`that it is unclear which fees provision applies to this case.
`However, the plaintiffs have not disputed the applicability of §
`505, and the two provisions are in any event similar. See Fogerty,
`510 U.S. at 523-24. We therefore presume that § 505 applies.
`
`
`

`

`10a
`
`of the case) and the need in particular circumstances
`to advance considerations of compensation and
`deterrence,’“ id. at 534 n.19 (quoting Lieb v. Topstone
`Indus., Inc., 788 F.2d 151, 156 (3d Cir. 1986)). Courts
`considering fee requests “should give substantial
`weight to the objective reasonableness of the losing
`party’s position,” but
`“must also give due
`consideration to all other circumstances relevant to
`granting fees.” Kirtsaeng v. John Wiley & Sons, Inc.,
`579 U.S. 197, 199, 200 (2016).
`The relevant “other circumstances” include the
`purpose of copyright
`law and
`its objective of
`“enriching the general public through access to
`creative works.” Id. at 204 (quoting Fogerty, 510 U.S.
`at 527). The 1976 Copyright Act endeavors to achieve
`that goal “by striking a balance between two
`subsidiary aims: encouraging and rewarding authors’
`creations while also enabling others to build on that
`work.” Id.10 Though guided by the Supreme Court’s
`
`10 As Klamer points out, some circuits take the view that fee
`awards under § 505 should be “the rule rather than the exception
`and should be awarded routinely.” Bell v. Eagle Mountain
`Saginaw Indep. Sch. Dist., 27 F.4th 313, 326 (5th Cir. 2022)
`(quoting Virgin Records Am., Inc. v. Thompson, 512 F.3d 724,
`726 (5th Cir. 2008)). The Seventh Circuit treats that “rule” as a
`presumption that the prevailing party is entitled to a fee award
`and, “[i]n the case of prevailing defendants, . . . this presumption
`[is] ‘very strong.’“ Mostly Memories, Inc. v. For Your Ease Only,
`Inc., 526 F.3d 1093, 1099 (7th Cir. 2008) (quoting Assessment
`Techs. of WI, LLC v. WIREdata, Inc., 361 F.3d 434, 437 (7th Cir.
`2004)). However, other circuits have disagreed that the inquiry
`should tilt in favor of a fee award. See, e.g., Designworks Homes,
`Inc. v. Thomson Sailors Homes, L.L.C., 9 F.4th 961, 965 (8th Cir.
`2021), cert. denied sub nom James v. Thomson Sailors Homes,
`L.L.C., 143 S. Ct. 147 (2022); Marshall & Swift/Boeckh, LLC v.
`Dewberry & Davis LLC, 586 F. App’x 448, 449 (9th Cir. 2014);
`Lava Records, LLC v. Amurao, 354 F. App’x 461, 462-63 (2d Cir.
`
`

`

`11a
`
`criteria and the objectives of copyright law, courts
`ultimately have “broad discretion . . . in deciding
`whether to fee-shift.” Id. at 208; see also id. at 209
`(“[C]ourts must view all the circumstances of a case
`on their own terms, in light of the Copyright Act’s
`essential goals.”).
`With these principles in mind, we first consider the
`district court’s fees determination and then address
`Klamer’s and Hasbro’s motions for appellate fees.
`B. Appeals from the Denial of Fees
`1. The District Court’s Decision
`In its ruling on the defendants’ fee requests, which
`it characterized as “a close call,” the district court
`focused primarily on the reasonableness of the
`Markham parties’
`copyright
`claim. Markham
`Concepts, 2021 WL 5161772, at *1. After briefly
`describing the competing contentions, the court
`concluded that “both sides raised plausible arguments
`and [p]laintiffs’ claim, though unsuccessful, was not
`so weak as to be objectively unreasonable to pursue.”
`Id. at *4.
`With respect to the governing law, the court noted
`that the plaintiffs had expert support in arguing that
`the Supreme Court, in Community for Creative Non-
`Violence v. Reid, 490 U.S. 730 (1989), had abrogated
`the instance and expense test for identifying works for
`hire under the 1909 Act. See Markham Concepts, 2021
`WL 5161772, at *2 (citing Melville B. Nimmer &
`David Nimmer, Nimmer on Copyright § 9.03[D]
`
`
`2009). We see no reason to depart from our approach of applying
`the factors without a predisposition toward granting fees. See,
`e.g., Airframe Sys., 658 F.3d at 108-110.
`
`

`

`12a
`
`for that reason, the court
`(2019)). Primarily
`“hesitate[d] to say that [p]laintiffs ‘argue[d] for an
`unreasonable extension of copyright protection.’“ Id.
`(quoting Matthews v. Freedman, 157 F.3d 25, 29 (1st
`Cir. 1998) (third alteration and emphasis in district
`court opinion)).11 The court similarly concluded that
`the plaintiffs’
`factual arguments were not
`unreasonable. See id. at *3-4. The court observed that
`“[b]oth sides came to trial with evidence to support
`their claims on all theories,” id. at *3, and it stated
`that “[d]efendants’ success turned on how the
`factfinder interpreted the evidence and assessed
`credibility,” id. at *4.
`After finding that the plaintiffs’ case was not
`“objectively unreasonable,” the court “ma[de] quick
`work” of the other Fogerty factors. Id. It observed that,
`“[b]ecause the case was not objectively unreasonable,
`it follows that it was not frivolous.” Id. The court also
`detected “[n]othing in the record” to show “that
`[p]laintiffs proceeded with an improper motivation
`that justifies an award,” and it did not see “any
`meaningful deterrence effect” from awarding fees to
`the defendants. Id. Based on its assessment of the
`factors, “the [c]ourt conclude[d] that the litigation
`furthered the purposes of the Copyright Act,” leading
`it to deny the defendants’ fee requests. Id. at *5.
`
`
`11 The district court also considered it “somewhat telling” that
`the status of the instance and expense test after Reid had been
`raised by other litigants before the Supreme Court, “lend[ing]
`some support to the conclusion that [p]laintiffs’ position was
`reasonable.” Markham Concepts, 2021 WL 5161772, at *2 n.7
`(citing Markham Concepts, 1 F.4th at 83 n.4).
`
`
`

`

`13a
`
`
`2. Discussion
`On appeal, the defendants insist that the district
`court misjudged the strength of both the legal and
`factual arguments advanced by the plaintiffs. Hasbro
`and Klamer assert that the court did not adequately
`address the serious flaws in the Markham parties’
`contentions, disregarding what they characterize as
`the “fundamental problems with [p]laintiffs’ legal
`positions” and failing to properly weigh the evidence
`in the record showing that the prototype was a work
`made for hire. The court further erred, the defendants
`claim, by summarily discounting the significance of
`other factors -- particularly the plaintiffs’ improper
`motivations and the need for compensation and
`deterrence.
`As we have noted, a district court’s ruling on fees
`may be reversed only for an abuse of discretion. See
`Small Just. LLC v. Xcentric Ventures LLC, 873 F.3d
`313, 326 (1st Cir. 2017). Indeed, we have observed
`that such rulings are entitled to “extreme[]” deference,
`T-Peg, Inc. v. Vt. Timber Works, Inc., 669 F.3d 59, 61
`(1st Cir. 2012) (quoting Airframe Sys., 658 F.3d at
`109), because “the trial court is in the best position to
`gauge the bona fides of a request for fees,” Spooner v.
`EEN, Inc., 644 F.3d 62, 70 (1st Cir. 2011).
`With that wide berth for the district court’s
`judgment call on fees, we see no basis for overriding
`the court’s discretionary decision against fee-shifting
`in this case. The law applicable to the Markham
`parties’ copyright claim was not so black-and-white
`that the district court acted unjustifiably when it
`deemed their argument against the instance and
`expense test as within the realm of reasonableness. As
`we observed in our merits opinion, the view that the
`
`

`

`14a
`
`Supreme Court’s decision in Reid had effectively
`abrogated the instance and expense test “has at least
`one influential adherent” (i.e., the Nimmer copyright
`law treatise). Markham Concepts, 1 F.4th at 83 & n.3.
`In addition, our court’s post-Reid decision invoking
`that test, Forward v. Thorogood, 985 F.2d 604 (1st
`Cir. 1993), did not expressly consider the test’s
`continuing viability after Reid. See Markham
`Concepts, 1 F.4th at 81-82. With those two factors on
`their side, the plaintiffs’ attempt to piggyback on the
`analysis in Reid and diminish the precedential force
`of Forward was not as unreasonable as the defendants
`depict it to be. The plaintiffs did not ask the district
`court to ignore our precedent. Rather, they argued
`that their interpretation of Reid should be considered
`because it had not been raised by the parties in
`Forward.
`A similar assessment applies to the facts. There
`was enough ambiguity in the evidence that was before
`the district court on how The Game of Life prototype
`was created, as well as on the understanding between
`Markham and Klamer about who should be
`designated the prototype’s author, that we cannot
`reject the court’s view that the plaintiffs’ factual
`position was not wholly unreasonable. Although the
`district
`court
`acknowledged
`that
`factual
`reasonableness was “a closer call” than
`legal
`reasonableness, it noted that the record contained
`“contemporaneous documents”—including the 1959
`Assignment Agreement and
`letters between
`Markham and Klamer—indicating that the two men
`viewed Markham as the prototype’s “creator” such
`
`

`

`15a
`
`that he was the copyright holder. See Markham
`Concepts, 2021 WL 5161772, at *3.12
`Moreover, while testimony
`from Markham’s
`employees about their contributions to the prototype
`unquestionably weakened the plaintiffs’ claims, it was
`up to the district court—as it observed—to “interpret[]
`the evidence and assess[] credibility.” Id. at *4; see
`also Markham Concepts, 1 F.4th at 84 n.6 (noting that
`“it was the district court’s job to sort through the
`evidence and decide what and who was credible”). The
`testimony of the employees, Grace Falco Chambers
`and Leonard Israel, was elicited in November 2017
`about events that had transpired more than a half-
`century earlier. It was thus not inevitable that the
`district court would fully credit the testimony adverse
`to the Markham parties’ position and construe the
`contemporaneous written
`evidence and prior
`
`12 The 1959 Assignment Agreement between Markham and Link
`included a provision stating that, “[a]t the request of LINK,
`MARKHAM has invented, designed and developed a game
`tentatively known as ‘THE GAME OF LIFE.’“ Further, the
`agreement required Markham, upon Link’s request, to pursue
`any intellectual property rights “to which he may be entitled as
`the inventor, designer and developer of the [g]ame” and to assign
`any such rights to Link, “provided that said assignments will
`revert to MARKHAM upon the termination of this agreement.”
`Markham Concepts, 1 F.4th at 85. Klamer also praised
`Markham’s work in a September 1965 letter, stating that “You
`did a good job. I think that the product you . . . came up with was
`topnotch.” In that same letter, Klamer reported to Markham that
`he had asked Milton Bradley to credit Markham on the game
`packaging, but the toy company had declined to do so. In another
`early example of the evidence of Markham’s role, a 1960 letter to
`a Link vice president from Milton Bradley’s vice president
`referred to “the LIFE game of Bill Markham.”
`
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`16a
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`statements against their view that Markham should
`be credited with creating the prototype. Although the
`evidence strongly indicated that any such authorship
`by Markham was at Klamer’s instance and expense,
`we noted in our merits decision that it was “a closer
`question” whether
`the assignment agreement
`between Klamer and Markham rebutted the work-for-
`hire presumption created by the instance and expense
`test. Markham Concepts, 1 F.4th at 85.
`Contrary to Klamer’s argument, the district court’s
`observation that the case “turned on how the
`factfinder interpreted the evidence and assessed
`credibility,” Markham Concepts, 2021 WL 5161772, at
`*4, does not reflect legal error or an assumption that
`attorney’s fees should “not be awarded unless a party
`succeeds on summary judgment.” Rather, in context,
`the district court’s statement simply reflects its view
`that a thorough weighing of the strengths of both
`sides’ evidence in this case led to its conclusion that
`the plaintiffs’ claim was not “objectively unreasonable
`to pursue.” Id.
`Hasbro and Klamer argue that, even if the
`instance and expense test did not apply, the plaintiffs’
`case was still factually hopeless because the evidence
`unequivocally supported their alternative theory for
`classifying the prototype as a work for hire—i.e., that
`it was created within a traditional employer-employee
`relationship by Chambers and Israel for Markham.
`Both defendants emphasize that the Markham
`parties’ counsel acknowledged in a colloquy with the
`district court that, if the court found that Israel and
`Chambers were Markham’s employees, there would
`be no termination rights. The attorney made this
`comment while attempting to persuade the court,
`post-judgment, to reconsider its use of the instance
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`17a
`
`and expense test and adjust its findings to declare
`that Markham was the author of the prototype.
`However, as we have noted, the district court did
`not address the alternative work-for-hire theory in its
`decision on the merits. Although the court briefly
`referred to the theory in its fees decision—recognizing
`the force of the defendants’ position in light of
`Chambers’ and Israel’s testimony—it declined to
`entirely discredit the plaintiffs’ view of the facts. See
`Markham Concepts, 2021 WL 5161772, at *3-4
`(stating, inter alia, that “[b]oth sides came to trial
`with evidence to support their claims on all theories”
`(emphasis added)). We, in turn, decline to override the
`district court’s overall assessment of the plaintiffs’
`factual case, particularly in the absence of findings
`and a ruling on the alternative theory.
`To be sure, the evidence shows substantial
`individual contributions by Israel and Chambers to
`the game box and board. The record is less clear,
`however, on how the various components of The Game
`of Life came together into the protectible creation
`defined by the 1976 Copyright Act as an “original
`work[] of authorship fixed in a[] tangible medium of
`expression.” 17 U.S.C. § 102(a). For example, the
`record contains Markham’s deposition testimony in
`1989 that, before Klamer approached him about The
`Game of Life, he had invented a three-dimensional,
`foldable game-board format, which was the style
`ultimately used for the prototype.13 In the same
`
`13 Markham’s 1989 testimony was elicited in a California state-
`court action he brought against Milton Bradley and the Link
`partners in a dispute over foreign royalties. The case settled,
`with Markham receiving an increased royalty percentage on
`overseas sales.
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`
`deposition, Markham described affixing the “track” to
`the game board for the first time when he brought the
`elements of the prototype to a meeting with Milton
`Bradley representatives at a Los Angeles restaurant
`in August 1959.14
`Given its holding that the prototype was a work for
`hire created for Klamer, the court did not need to
`delve into the details relevant to the alternative
`theory that it was a work for hire created for
`Markham by Chambers and Israel.15 Indeed, the
`
`14 The record also includes Chambers’ testimony that some parts
`of the “final” prototype game board -- including the spinner,
`mountains, and “circuitous track” -- were constructed in plastic
`by outside contractors based on the models created in-house in
`paper, cardboard, or wood. She did not say whether she attached
`the plastic versions of those items to the board. Israel’s testimony
`about how the prototype was constructed also left room for
`interpretation. At one point, he testified that he had primary
`responsibility for the box cover, Sue Markham had primary
`responsibility for the rules, and Chambers “[a]ssembled the
`things in the proper place and with the proper kind of wording
`and colors . . . on the final board.” Following up on re-cross, the
`plaintiffs’ attorney noted that Israel had described “the process
`where you took the thumbnail sketches and then put it on the
`final board,” and “[e]ach time you’ve said we put it on the board.”
`The attorney then asked: “Who are you referring to when you say
`we?” Israel answered:
`I guess I always thought of the team who was working
`on The Game of Life, and I just referred to the group as
`we because I did some of it, Grace did some of it, Bill
`did some of it, Reuben did his part. So everybody was
`working on this at different times and you never just
`isolated it and had no input from everyone else.
`15 Hasbro intimates that Markham’s claim to authorship could
`have succeeded only if he “alone, physically created every
`copyrightable aspect of the Prototype,” but it provides no citation
`for that principle of law. (Emphasis omitted.) We decline to delve
`sua sponte into the intricacies of copyright law with respect to a
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`district court’s choice not to reinforce its work-for-hire
`conclusion based on this alternative theory may
`indicate that it viewed the record evidence as more
`complex
`than
`the defendants acknowledge.16
`Although Hasbro blames the plaintiffs for any such
`lack of clarity, the record is not so straightforward
`that we can say the district court erred in finding that
`the Markham parties “did not purposefully obscure
`relevant evidence” or “make
`false assertions.”
`Markham Concepts, 2021 WL 5161772, at *3. In any
`event, we are unwilling to reject the district court’s
`evaluation of the plaintiffs’ factual arguments based
`on a theory that was only lurking in the background.
`Nor do we see any critical flaw in the court’s brief
`treatment of the motivation and deterrence factors.
`
`work that may have been created in part by employees of an
`employer who also himself created elements of the work. No
`party in this case has suggested formal joint authorship by
`Markham, Chambers, and Israel, and we note the issue only
`because Hasbro’s assertion appears to disregard the concept of a