IP Law Daily, COPYRIGHT—N.D. Cal.: Game developer awarded attorney fees in copyright suit voluntarily dismissed by competitor, (May 8, 2023)

By Donielle Tigay Stutland, J.D.

A California district court granted an award of $112,000 in attorney fees and costs after determining that the defending developer was the prevailing party.

A California district court awarded $112,000 in attorney fees and costs to Say Games, LLC, the creator of mobile video game Cannon Shot!, after determining that it was a prevailing party in a copyright suit brought by Good Job Games, the maker of mobile video game Crazy Jump 3D. Although the case was voluntarily dismissed by Good Job Games, the court determined that Say Games was the prevailing party and found that issue preclusion and claim preclusion would prevent a refiling of the copyright infringement suit (Good Job Games v. SayGames, LLC, May 4, 2023, Chen, E.).

Background. Good Job Games (GJG) and SayGames (SG) are both video game developers. SayGames created and released a game called Crazy Jump 3D, which involves the user launching objects from a cannon and into a bucket by manipulating objects that alter their trajectory. The game was released in September 2019. SG developed and released a game called Cannon Shot!, in which players fire balls from a cannon into a bucket by navigating them through various obstacles in October 2019.

GJG filed a suit for copyright infringement against SG in December 2019, alleging that Cannon Shot! infringed on Crazy Jump 3D. The court determined that several of the common features between Crazy Jump 3D and Cannon Shot! are unprotected because these features are inherent aspects of physics puzzle games. Further, the court found that the protected elements of the Crazy Jump 3D that remain (i.e., colors, decorative shapes, animations, design levels and layouts other than the basic design of the cannon and bucket game) are not substantially similar to the similar elements of the other game. The court concluded that “[b]ecause the protected elements of the works are not substantially similar, GJG has no viable copyright claim as a matter of law. Thus, the Court dismisses the complaint for failure to state a claim.” The court gave GJG until January 6, 2023, to amend its complaint, although GJG indicated in a hearing it did not intend to amend its complaint.

On January 20, 2023, SG moved for $133,976.17 in attorney fees and costs under Section 505 of the Copyright Act, asserting it was entitled to fees as the prevailing party. On January 22, 2023, GJG filed a notice to voluntarily dismiss the case.

Prevailing party under Copyright Act. The court first addressed the threshold question of whether SG was the “prevailing party.”

GJG argued that because it voluntary dismissed the case without prejudice it meant that there was no prevailing party, thus each party should bear its own costs. The court noted that, “typically, a dismissal without prejudice—unlike dismissal with prejudice—does not materially alter the legal relationship of the parties.” However, GJG argued that the dismissal with leave and GJG’s voluntary dismissal without prejudice “do not materially alter the parties’ legal relationship because GJG remains free to refile copyright claim in federal court.” To analyze this argument, the court looked at whether issue preclusion or claim preclusion would prevent GJG from refiling a copyright infringement claim against SG’s accused game.

Turning to issue preclusion, the court reviewed whether: “(1) the issue necessarily decided at the previous proceeding is identical to the one which is sought to be relitigated; (2) the first proceeding ended with a final judgment on the merits; and (3) the party against whom collateral estoppel is asserted was a party or in privity with a party at the first proceeding.” The court rejected GJG’s arguments that by filing a voluntary dismissal under Rule 41(a) after a dismissal was entered on the merits and after GJG opted not to amend defeats the finality. The court concluded that “issue preclusion materially alters GJG and SG’s legal relationship by precluding GJG from relitigating the substantive issue of substantial similarity between GJG’s game and the current version of SG’s game, the effect of which is to bar GJG from further asserting the copyright infringement claim against SG’s accused game.”

Next, the court analyzed the three elements of claim preclusion: “(1) an identity of claims, (2) a final judgment on the merits, and (3) privity between parties.” The court found all three elements were met. With respect to the first element, GJG would be precluded from bringing a claim of copyright infringement against SG’s current version of Cannon Shot! as the issues would be identical. For the second element, the court noted that although the dismissal included leave to amend it does not defeat finality for claim preclusion purposes. The court determined that “Finality crystallized when the time ran to file an amended complaint.” The court also found that the third element was met.

GJG argued that because the case was voluntarily dismissed it did not materially alter the parties’ relationship. However, the court rejected this argument and indicated that it was important that “the dismissal by GJG was filed after the stated time for GJG to amend, and this Court’s ruling on the merits effectively became final on January 7, 2023, before GJG filed its voluntary dismissal.”

The court concluded that SG is the prevailing party and is thus eligible for attorney fees under the Copyright Act.

The Case is No. 19-cv-07916-EMC.

Attorneys: Ryan Tyz (Tyz Law Group PC) for Good Job Games Bilism Yazilim Ve Pazarlama A.Ş. Craig Brian Whitney (Frankfurt Kurnit Klein Selz PC) for SayGames LLC.

Companies: Good Job Games Bilism Yazilim ve Pazarlama A.Ş.; SayGames, LLC

Cases: Copyright TechnologyInternet CaliforniaNews