Death Of Copyright
The Los Angeles Lawyer (November 2010)
Written by Steven T. Lowe
Copyright infringement claims against motion picture studios and television networks, for all intents and purposes, are dead. Of the 48 copyright infringement cases against studios or networks that resulted in a final judgment within the Second and Ninth Circuits (and the district courts within those circuits) in the last two decades, the studios and networks prevailed in all of them and nearly always on motions for summary judgment.
In fact, in the last 20 years, only two publicly available copyright infringement cases (published or unpublished) against studios or networks proceeded to jury trial with verdicts for the defendants.
Were all these cases without merit, or did the studios and networks simply have far superior counsel in each case? These suppositions are very unlikely. The case law governing these actions simply has become so amorphous that, for almost every principle of law favorable to creators, the courts have endorsed and applied an opposite principle. As a result, the determination of each case now rests almost entirely in the unfettered discretion of trial judges, who have consistently dismissed plaintiffs’ claims. Unless the current trend changes, longstanding principles once favorable to creators may be eclipsed by an evolving body of law so unfavorable to them that the studios and networks are essentially immunized from liability except in cases of identical copying and conceded access to the plaintiff ‘s work.
Since direct evidence of copying rarely is available in a copyright infringement suit, plaintiffs typically must establish that the defendant had access to the plaintiff’s work and that the two works are substantially similar. Proof of access requires only a “reasonable possibility” to view or copy the plaintiff’s work. Courts commonly cite to the countervailing principle, however, that “mere speculation or conjecture” is insufficient. Because the analysis of a reasonable possibility necessarily includes some conjecture and speculation, the “line between a ‘bare’ possibility and a ‘reasonable’ possibility of access is difficult to draw.” If the work has not been widely disseminated, which is usually the case for unpublished screenplays, “a particular chain of events” must be established between the plaintiff’s work and the defendant’s access to that work.
Early cases outside of the Ninth Circuit found access even when the plaintiff could not actually place the work in the hands of the defendant. For example, in the First Circuit case of Morrissey v. Procter & Gamble Company, the plaintiff offered evidence that he had mailed his copyrighted work to the defendant’s principal office. The court held that this mailing created “an inference that the letter reached its proper destination” and that to require the plaintiff to show that the “particularly responsible employees had received his communication” would have been unfair. Similarly, in 1971, a New York district court held in Bevan v. Columbia Broadcasting System, Inc ., that corporate receipt could be “sufficient to raise a triable issue, despite plaintiff’s inability to show receipt by the responsible employee,” because it would be unfair to “saddle a plaintiff with disproving non-access within a corporate structure foreign to him and with witnesses not his own.”
Unfortunately for creators, the Bevan holding was rejected by some courts. For example, in Meta-Film Associates, Inc. v. MC A, Inc ., a 1984 case, the Central District of California identified only three circumstances that would meet the type of close relationship between coworkers necessary to give rise to a reasonable opportunity of access. The person who received the plaintiff’s work must (1) be “a supervisor with responsibility for the defendant’s project,” or (2) “part of the same work unit as the copier,” or (3) have “contributed creative ideas or material to the defendant’s work.” By limiting, as a matter of law, the instances in which a plaintiff can prove access within a corporate structure, the Meta-Film court effectively precluded plaintiffs from establishing access in numerous scenarios in which there is actual access but the facts do not fall into one of the court’s enumerated categories.
The Meta-Film court also recognized situations in which a third-party intermediary not of the same business enterprise as the alleged infringer may be found to have passed along the plaintiff’s work. The court limited such situations, however, to instances in which the third-party intermediary “provided creative suggestions and ideas” concerning the allegedly infringing work and “the dealings between the three entities (plaintiff, defendants, and [intermediary]) . . . related to the identical subject matter.” Although Meta-Film‘s effect in the Ninth Circuit has been limited to several district court cases — and the Ninth Circuit has not adopted its holding — Meta-Film has been influential in the Second Circuit, which expressly relied on the case when it overruled Bevan. Thus, Meta-Film remains a prominent example of why commentators note that “many courts set an unrealistically high bar as to what constitutes a close relationship” for establishing access.
Even when access is established, the path to a favorable judgment remains perilous for plaintiffs. In fact, in many cases in which summary judgment has been granted for defendants, the courts simply presumed that access existed. This is because “even massive evidence of access cannot by itself avoid the necessity of also proving the full measure of substantial similarity.” And this full measure has become virtually impossible to establish under recent case law.
To determine whether substantial similarity exists between works at the summary judgment phase, the Ninth Circuit has instructed courts to perform an “extrinsic” analysis of the works’ objective elements, focusing on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” In application, however, this analysis has been unpredictable and has resulted in wildly conflicting case law and results. In addition, in recent years, the Ninth Circuit has ignored established case law that requires the court to not only include “unprotectable elements” in its analysis but also exclude dissimilarities between the two works.
A long line of copyright infringement cases holds that a plaintiff’s and defendant’s works should be compared in their entirety, including both protectable and unprotectable elements, to determine whether a qualitatively (or quantitatively) significant portion of a plaintiff’s work was appropriated. This comports with basic principles of copyright law and is known as the selection-and-arrangement test.
In the seminal 1991 case Feist Publications Inc. v. Rural Telephone Services Company, the US Supreme Court held that, when dealing with works largely (or even entirely) composed of unprotectable elements, “choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original.” Transposed to the literary arts, the test provides that, although copyright law does not generally protect basic plot premises in literary works or commonly used expressions that flow naturally from those premises (scenes a faire), the original selection and arrangement of these elements can constitute a protectable work in and of itself. Therefore, the wholesale exclusion of all unprotectable elements improperly limits the scope of copyright protection. The Ninth Circuit has recognized this principle on numerous occasions but has spent the better part of the past decade aggressively denying its use to plaintiffs in copyright infringement cases against studios and networks.
Metcalf v. Bochco, decided in 2002, is one of only two copyright infringement cases against a studio or network in the last 20 years that proceeded to trial. (The other is Shaw v. Lindheim.). In Metcalf, the plaintiff offered evidence that the defendant had misappropriated many elements of the plaintiff’s screenplay to create a television series for NBC. The court recognized that “the similarities proffered by [the plaintiff] are not protectable when considered individually; they are either too generic or constitute ‘scenes a faire.'” “The presence of so many generic similarities and the common patterns in which they arise help satisfy the extrinsic test,” however. The court memorably compared the elements of literary works to those of musical compositions:
The particular sequence in which an author strings a significant number of unprotectable elements can itself be a protectable element. Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection.
The court did not strip the works of their unprotectable elements before diving into an extrinsic analysis of substantial similarity, consistent with the general purpose of the selection-and-arrangement test (that is, to protect in combination that which cannot be protected separately). In the years since its publication, however, the analysis of Metcalf has proved to be the exception and not the rule.
The 2003 case of Rice v. Fox Broadcasting Company may have played the heaviest hand against the use of the selection-and-arrangement test. The Rice court stated that “similarities derived from the use of common ideas cannot be protected.” This assertion ignored the holdings and rationales of the cases that the court cited, including Metcalf, but the Rice court attempted to distinguish Metcalf by stating that it was “based on a form of inverse ratio rule analysis” ( i.e. , the rule whereby more access requires less substantial similarity and vice versa) and seemed to imply that the selection-and- arrangement test is applicable only when access is conceded. This implication, which limits Metcalf to its facts, overlooks that nowhere in Metcalf (or any case prior to it) is the inverse ratio rule required for the application of the selection-and-arrangement test. Nevertheless, Rice‘s misinterpretation of Metcalf has been repeatedly followed by the Ninth Circuit in subsequent opinions.
Indeed, in the 2006 case of Funky Films, Inc. v. Time Warner Entertainment Company, L.P., the Ninth Circuit once again ignored the selection and arrangement test, holding that:
[Courts] must take care to inquire only whether the protectable elements, standing alone, are substantially similar. In so doing, [courts] filter out and disregard the non-protectable elements in making [their] substantial similarity determination.
Moreover, in one flourish of its pen, the Funky Films court created a whole new defense for alleged infringers where none previously existed and that has been heavily relied on in subsequent court opinions. The court stated that a “reading of the two works reveal[ed] greater, more significant differences” than similarities. In essence, the court constructed a new test of “substantial dissimilarity” in the context of copyright infringement, one that completely contravenes the well-established principle that dissimilarity is irrelevant as long as the plaintiff makes a showing of the defendant work’s similarity to a substantial element of the plaintiff’s work.
It appears that the old Learned Hand chestnut that “no plagiarist can excuse the wrong by showing how much of his work he did not pirate” may no longer be true. The result of this shift in copyright law is that third parties now have the freedom to steal from screenplays with impunity, provided they cover their tracks by creating sufficient dissimilarities in what is, in reality, a “derivative work.” The recent case Benay v. Warner Bros. illustrates this point.
In Benay, decided in June 2010, the plaintiffs’ agent pitched and provided a copy of their screenplay The Last Samurai to the president of production at Warner Bros. The studio declined to proceed further with the screenplay but later produced and released a film with the exact same title and premise as the plaintiffs’ work. Despite compelling evidence that actual copying of the plaintiff’s screenplay occurred, the court deemed it insufficient to overcome the overall lack of similarities between protected elements of the works.” The Ninth Circuit’s extrinsic analysis once again ignored the selection-and-arrangement test, comfortably stripping all unprotected elements from the works and ultimately using the new Funky Films dissimilarity analysis as a basis to rule against the plaintiffs on their copyright claim.
In the end, the Benay plaintiffs were able to continue to pursue only their state law claim of breach of implied contract. Though this claim can be satisfied when copying does not rise to a level of substantial similarity, it requires a higher level of access to establish an implied contract, as well as privity between the parties. Furthermore, even if established, the remedies available in a breach of implied contract claim are not as broad as those for copyright claims. Overall, the state claim is a poor substitute for the once robust protections offered to creators under copyright law. The claim also has been limited extensively by the application of the preemptive effect of federal copyright law, the very law that creators hoped it would supplement.
Phasing Out Experts and Juries
The outcome in Benay is emblematic of just how far copyright decisions have strayed from maintaining a balance between the interests of creators and the interests of producers. The ad hoc use of substantial dissimilarity and the refusal to acknowledge selection and arrangement not only has stripped creators of the doctrines that once protected them but also effectively endorses creative theft whenever the elements of an implied contract are not satisfied. If more juries were exposed to the facts of these cases, creators might hope to reverse the imbalance. The determination of appropriation has time and again been allocated to the presiding judge of each case instead. Indeed, copyright infringement may be the only remaining area of the law in which judges seem increasingly willing to decide material facts on summary judgment, effectively removing both experts and juries from the process entirely.
While courts repeatedly cite the proposition that “summary judgment is not highly favored on the substantial similarity issue in copyright cases,” the overwhelming majority of copyright cases are dismissed on exactly that issue. Admissible expert testimony normally can defeat summary judgment against the party that it supports. When two expert witnesses reasonably contradict one another, the contradiction should create a material issue of fact that a jury is required to resolve. Courts inexplicably have carved out literary analysis as an exception to this rule, however. Courts have become more willing to dismiss expert witnesses to screenplay copyright infringement claims and analyze the works themselves.
In 2001, the Central District of California stated in Fleener v. Trinity Broadcasting Network (a case that was not against a major studio), “There is abundant case-law establishing that expert testimony is particularly appropriate in summary judgment motions under the copyright ‘extrinsic test.'” Judges have become comfortable with disregarding this type of testimony when they believe that they can do their own comparison, however, regardless of how it comports with well established legal standards.
Many troubling questions arise from this trend. Why do judges believe that they can perform th eextrinsic analysis of literary works better than plaintiffs’ experts? An extrinsic analysis is no easy feat. A judge who dismisses an expert witness, believing the subject matter within his or her grasp, effectively acts as a self-appointed expert. This is a disservice to the creators of literary works. It implies that writing a screenplay is a less complex and involved undertaking than writing a song or a software program. Moreover, the judge essentially deprives plaintiffs of their constitutional right to a jury trial. Nevertheless, this is the current state of copyright law for literary works, with no signs of rebalancing anytime soon.
In copyright infringement cases, judges are supposed to play the role of gatekeeper to the jury. Their task in analyzing substantial similarity is supposed to be extrinsic, that is, objective. If a plaintiff can show objective similarity, a jury is brought in to determine whether the total concept and feel—the intrinsic test—of the plaintiff’s and defendant’s works are substantially similar. In practice, however, the extrinsic test has been devoured by an intrinsic test performed by the judge. Simply put, with judges able to substitute their opinions for those of experts and juries on issues of material fact, all other witnesses to the case become effectively redundant.
Case law has provided defendants with an impenetrable shield of confusing and often contradictory principles that thwart plaintiffs in nearly every instance, with only tiny cracks in that shield providing a mere glimpse of hope. Unless the Ninth Circuit seriously reexamines where courts have taken the law of copyright infringement, the cards will remain completely stacked in favor of the studios and networks.