Intellectual Property

Watching And Learning As An IP Practitioner

We as IP lawyers have much to gain by learning from each other’s work.

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One of the joys of identifying interesting IP cases is the opportunity to follow them as they develop. In fact, it is a good exercise for IP lawyers of all experience levels to keep abreast of cases that they find interesting. For one, it is always good to see what the competition is doing, by analyzing how other firms are approaching cases in the present. Often, one can glean insights that can be applied to one’s own caseload just by monitoring what other firms are doing in similar cases that are being litigated at the same time. Second, by focusing on tracking a few cases that present legal issues that are actually of interest to us in the moment, we are more likely to actually follow through and spend the half-hour it can take to review a docket and read the updated filings of interest. Every nit of motivation helps.

Either way, I enjoy it and find watching cases unfold edifying and fascinating. As one’s level of experience and sophistication develops, so does one’s critical eye when reviewing the work of other firms or trying to gauge the court’s likely reaction to what is being presented. When I review a docket, for example, I try to raise the personal stakes by imagining that I am being asked by a client to actually “shadow” the case. Or that I will be asked by one of the parties in the case to step in as counsel to replace one of the current firms. While in most cases that is unrealistic, I find it helps my motivation to actually follow through and do the review — with an eye toward gleaning at least one or two useful things from that review to justify the time investment.

Let’s take a case I wrote about in a prior column as an example. A New York-based performance coach and author, Denise Shull, took aim at the hit television show “Billions” and its creators, arguing that one of the show’s key characters, Dr. Wendy Rhoades, was clearly based on Ms. Shull’s persona and written work. Perhaps more importantly, Ms. Shull had allegedly been assured of a consulting role on the show, after having met with the creators and the actress who plays the Wendy character during the show’s development phase. Because that consulting role never materialized, I characterized the case as having a higher than normal chance of getting decided on the merits, at least in part because of the power an emotion like a sense of betrayal can have over an aggrieved party. So it was not surprising to see, when I checked the docket recently, that a motion to dismiss had been filed by the “Billions” crew — and responded to with vigor by the plaintiff.

The briefs are full of interesting nuggets on both sides. Each side tries to frame the dispute in a persuasive way in an attempt to convince the court. For the defendants, this case is just one of a long line of cases targeting hit content such as movies, television shows, or novels, where an erstwhile unacknowledged contributor or true creator comes forward with a claim. Framing the case this way — bolstered by a long string cite of cases where similar copyright claims against hit content were dismissed — allows the defendants to argue that this case should be summarily dismissed as well. In further support, the defendants also engage in a tried and true defense-oriented analysis of the plaintiff’s copyrighted work, highlighting differences between that piece of content and “Billions” — especially the differences between the “fully realized and vividly depicted character” on the show and the “empty suit” that represents Shull in Shull’s own work.

For Shull, this case is as much about the factual backstory — including the dealings that the show’s creators had with Shull while developing “Billions” — as it is about the unique nature of the idea of a female performance coach with the ability to coax peak performance from high-powered hedge fund types. True, defendants couch the idea of a character with that persona as an unprotectable, abstract one, no matter if it first appeared in Shull’s work or was based on her own experiences. For Shull, however, that is just the starting point for a comparison between her book and the show, including allegations that there were elements that are “eerily similar” between the works. At bottom, Shull presents a number of arguments suggesting to the Court that there is something more to this particular case than the run-of-the-mill “hot content, hot claim” case that the defendants want to characterize it as, in the hopes of at least getting to the discovery phase and further testing the creators on the extent of their reliance on Shull’s work in creating the Wendy Rhoades character. All in all, the briefing on all sides suggests that the oral argument, which was held a few weeks ago, would be an interesting one to attend. (Here, too, I recommend attending oral arguments in cases that you are interested in, and are local, as a IP lawyer’s form of market research.)

Yes, the parties here can’t even seem to agree on which is the proper legal test to apply in deciding the copyright claims. And the case is very far away from the stage of even being able to outline what a recovery for the plaintiff might look like. But we as interested observers can glean a lot from how the parties are approaching matters at the motion to dismiss stage. We can ask, and discuss with our colleagues (especially more junior ones as a form of training), how and what we might have done differently. Moreover, having a familiarity with the briefing only enhances the value of reviewing the eventual decision as well.

Ultimately, we as IP lawyers have much to gain by learning from each other’s work. It is easier than ever to monitor cases of interest, and we should look for ways to do so in a productive manner. Both to keep current with how our peers are litigating IP issues, and as opportunities to discuss interesting cases with our colleagues. Reviewing a motion to dismiss may not seem as fun as watching an episode of “Billions,” but it can be entertaining in its own right. More importantly, watching is learning when it comes to following interesting dockets.

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Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.

Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.

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