The case of Devil's Advocate, LLC v. Zurich American Ins. Co., Case No. 1:13CV1246, 2014 U.S. Dist. LEXIS 174309 (E.D. Va. Dec. 16, 2014), found here, tells the story of an expert fee dispute that turned into a case of copyright infringement.

The story begins when the defendant sought to retain the plaintiff, a legal fee management and consulting company, as an expert on legal fees in a civil case, but the parties could not agree on a fee. During the course of negotiations, an attorney for the defendant, with the knowledge and acquiescence of the plaintiff, filed an expert designation naming the plaintiff as defendant's expert witness. While it was not required, the attorney also attached the plaintiff's resume´ to the designation.

When the fee negotiations broke down, the plaintiff sent the defendant an invoice for services rendered and ultimately filed suit, alleging, among other things, that the submission of the resume´ to the court infringed the copyright in the resume.

In response, the defendant raised the defense of fair use. Judge Ellis went through the four factors that guide a court's analysis of a claim of fair use and reached "the sensible conclusion" that the defendant's use of the resume´ was protected as fair use.

Specifically, Judge Ellis found:

  • The defendant's purpose in submitting the resume´, providing notice of a potential expert witness, is qualitatively different from the resume's intrinsic commercial purpose.
  • No less an authority than Nimmer on Copyrightsstates that submitting a document in a judicial proceeding does not constitute copyright infringement unless the copyright holder can show that it harms the potential market for the document. Far from harming the market for the expert's resume´, the submission may have benefitted the plaintiff by enhancing his profile as an expert.
  • The nature of the copyrighted work was far removed from the essence of creative works protected by the Copyright Act.
  • That the defendant used the entire copyrighted work was irrelevant because the alleged infringer had a legitimate purpose behind the use and that purpose was substantially different from the original use of the copied work.
  • The fourth and most important factor, the effect of the use on the potential market for the work, also weighed in favor of finding fair use because plaintiff did not show that there was any market for the resume´ or that the market for either the resume´ or the plaintiff's services had been adversely affected.

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