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Devil's Advocate, LLC v. Zurich American Insurance Co.

United States District Court, E.D. Virginia, Alexandria Division

December 16, 2014

DEVIL'S ADVOCATE, LLC, et al., Plaintiffs,


T.S. ELLIS, III, District Judge.

By Order dated October 10, 2014, [1] defendant's motion for summary judgment in this matter was granted in part and deferred in part. Defendant's motion was granted with respect to plaintiffs' breach of contract and conversion claims, but the ruling on plaintiffs' copyright infringement claim was deferred pending further briefing. Specifically, because the record was unclear as to whether plaintiffs' copyright in a document titled "Devil's Advocate Confidential Proposal" also covered plaintiff John Toothman's resume, the October 10 Order directed the parties to submit evidence on this issue. Both parties complied with the October 10 Order and filed timely submissions on whether plaintiffs' copyright Certificate listing the Confidential Proposal also extended to Toothman's resume. Accordingly, the previously-deferred portion of defendant's summary judgment motion is now ripe for disposition.


The parties' dispute arises from their unsuccessful negotiations concerning whether defendant would retain plaintiff John Toothman as an expert witness on legal fees in a civil case filed in Texas.[2] The facts pertinent to plaintiffs' copyright infringement claim may be succinctly stated.[3] As reflected in the summary judgment record and the Court's October 10 Opinion, [4] the parties engaged in a series of email and telephone communications in which defendant considered whether to retain plaintiffs in evaluating disputed legal fees in the Texas litigation. In the end, as the October 10 Opinion reflects, the parties did not reach an agreement, as there was never any meeting of the minds as to plaintiffs' fee. See October 10 Opinion at *5-*7.

In the course of their negotiations, Toothman, on October 12, 2010, sent Blair Dancy, an attorney representing defendant, an email outlining Toothman's potential availability to testify in the Texas litigation, as well as plaintiffs' normal rates for reviewing and analyzing legal bills. In this email, Toothman advised Dancy he was attaching his resume, which he did. Also, it is undisputed that plaintiffs' website states that Toothman's resume is available to prospective clients upon request.

On November 19, Dancy served opposing counsel in the Texas litigation with an Amended Designation of Expert Witness which listed Toothman as one of defendant's experts and included Toothman's resume. This Amended Designation of Expert Witness was also included in an Amended Motion for a Rule 166 Pretrial Conference filed in the Texas court on December 3.[5] As the summary judgment record indicates, Toothman was aware of, and acquiesced in, defendant's designation of Toothman as an expert in the Texas litigation even though the parties had not reached agreement on retention.

Thereafter, Toothman emailed Dancy on multiple occasions, asking when plaintiffs could expect to begin work, noting in one email that "naming me [Toothman] as a witness before we [are] retained is likely to cause us some issues."[6] Also, although plaintiffs were aware that Toothman had been designated as an expert witness in the Texas litigation, the record makes clear that the parties never reached an agreement for defendant to retain plaintiffs. Notably, with the exception of the October 12 email, it does not appear from the summary judgment record that the parties explicitly discussed Toothman's resume during negotiations.

In January of 2011, Toothman emailed defendant an invoice for services rendered in the Texas litigation, contending that defendant had effectively retained him when it designated him as an expert upon filing its Amended Designation of Expert Witness in the Texas litigation. Defendant disagreed, and attempted to resolve this issue with Toothman over the telephone. After Toothman declined to discuss this issue further, defendant removed Toothman's name from defendant's expert witness designation in the Texas litigation. Thereafter, the Texas litigation was resolved. Plaintiffs then filed this action, alleging breach of contract, conversion, and copyright infringement. Summary judgment was granted in favor of defendant on plaintiffs' breach of contract and conversion claims. See October 10 Order at 1. With respect to plaintiffs' copyright infringement claim, plaintiffs allege that defendant's use and submission of Toothman's resume infringed the copyright plaintiffs hold in Toothman's resume. Plaintiffs further contend that Toothman never consented to the use and submission of his resume in the Texas litigation in any of the parties' communications.



It is well-settled that a plaintiff seeking to prove copyright infringement must show ownership of a valid copyright. Feist Publ's, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). A certificate of copyright registration is credible evidence of copyright validity, as "[t]he submission of a valid certificate of copyright registration creates a presumption of originality for five years from the date of recognition." Universal Furniture Int'l Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 430 (4th Cir. 2010).

At the time of oral argument on defendant's motion for summary judgment, the copyright Certificate in the record listed only plaintiffs' Confidential Proposal, and Toothman's resume was neither listed nor referred to in the Certificate.[7] Accordingly, the October 10 Order directed the parties to submit further briefing on the specific question of whether the Certificate extended to Toothman's resume. The parties complied with this direction, and a review of their submissions confirms that plaintiffs have carried their burden on this point by submitting a Certificate of Registration retrieved from the Copyright Office which shows that Toothman's resume was part of the Confidential Proposal when that document was submitted to the Copyright Office. Moreover, the Confidential Proposal, at the bottom of page 2, states that Toothman's resume is attached to the Confidential Proposal. It appears therefore, on this record, that the Certificate covers Toothman's resume as well as the Confidential Proposal.

Defendant does not point to any contrary evidence beyond the fact that plaintiffs did not explicitly designate Toothman's resume as protected by the Certificate either in an exhibit to the complaint or in the supplemental Toothman declaration, respectively. These facts do not contradict that the resume was submitted to the Copyright Office as part of the Confidential Proposal and hence they fall far short of rebutting the presumption of validity stemming from plaintiffs' Certificate which extends to Toothman's resume. Therefore, the summary judgment analysis proceeds on the basis that plaintiffs' copyright Certificate extends to Toothman's resume due to the presumption of validity associated with the Certificate. See ...

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