Murray Hill Publications, Inc., Plaintiff-Appellee/cross-Appellant v. Twentieth Century Fox Film Corporation, Defendant-Appellant/cross-Appellee

Citations: 361 F.3d 312; 70 U.S.P.Q. 2d (BNA) 1220; 2004 U.S. App. LEXIS 5174; 2004 WL 537176Docket: 01-2668/2721

Court: Court of Appeals for the Sixth Circuit; March 19, 2004; Federal Appellate Court

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Twentieth Century Fox Film Corporation (Fox) appeals a jury verdict favoring Murray Hill Publications, Inc. (Murray Hill) in a copyright infringement case. Murray Hill claimed that Fox's film "Jingle All The Way" (JATW) infringed on its screenplay "Could This Be Christmas" (CTBC), which it submitted to Fox prior to the film's production. At trial, expert evidence was presented by both parties to demonstrate the substantial similarity between JATW and CTBC. The jury ruled in favor of Murray Hill, but the district court subsequently disallowed significant portions of the damage award and denied attorney's fees. On appeal, Fox contends it should have received summary judgment based on a lack of substantial similarity, argues that the trial was compromised by improper expert testimony and misleading jury instructions, and claims the damages awarded were unfounded. Murray Hill cross-appeals for the full jury award and attorney's fees. The appellate court reverses the district court's decision, asserting that Fox was entitled to judgment as a matter of law, and does not address the other issues raised. The screenplay for JATW was primarily authored by Randy Kornfield, who developed the idea from personal experiences and interactions in 1993. Kornfield registered a treatment and later a full screenplay with the Writer's Guild of America, which was eventually bought and revised by Fox and its production affiliates leading to the creation of JATW.

Brian Webster, a Detroit school teacher and aspiring scriptwriter, authored the CTBC screenplay, initially titled "Action Man: The Toy," in 1988, inspired by challenges in acquiring a Golden Batman for his son. He registered the screenplay with the Copyright Office in 1989 and re-registered it in 1991. Between 1989 and 1993, Webster and his agent attempted to sell the screenplay to various producers, but the district court found that Fox did not have access to it during this time, deeming Murray Hill's theories of access speculative. On February 4, 1994, Webster sold an option and later all rights of CTBC to Murray Hill, which submitted the screenplay to Fox on June 21. Although it was read by Fox script reader Rudy Romero, Fox declined it on August 1, and Murray Hill made no further efforts to sell it.

In February 1996, following an article about the JATW movie, Murray Hill's principal, Robert Laurel, noted similarities between JATW and CTBC and sent cease-and-desist letters to Fox. Initial settlement discussions failed due to Murray Hill's lack of a specific theory on how Fox accessed the CTBC screenplay. Despite this, Fox proceeded with JATW, which was released on November 22, 1996, and became commercially successful, earning $183 million by December 2000.

Murray Hill filed suit against Fox on December 3, 1997, alleging copyright infringement of the CTBC screenplay. The court found that Murray Hill did not prove Fox had access to the screenplay before submission. During the jury trial, the court applied the Ninth Circuit's substantial similarity test but did not inform the jury of its pre-trial ruling that the JATW treatment did not infringe. The jury ultimately ruled in favor of Murray Hill, awarding $19 million in damages. The district court later reduced this amount to $1.5 million, maintaining only the producer's and writer's fees. Fox appealed, and Murray Hill cross-appealed the ruling.

To assess whether the district court correctly allowed the case to proceed to the jury, it is necessary to examine both the evolving copyright law regarding the elements of proof for infringement and the specific characteristics of the works in question. The legal framework, as established by the circuit, will be outlined, followed by a description of the dramatic elements of the two works, and an evaluation of the protectable elements of the copyrighted work in relation to the allegedly infringing work.

Copyright protection under Title 17 of the U.S. Code grants owners exclusive rights to reproduce, create derivative works, and distribute their works. Infringement remedies include injunctive relief, impoundment, damages, and legal costs. To prove copyright infringement, a plaintiff must demonstrate ownership of the work and that the defendant copied it. In the absence of direct evidence of copying, plaintiffs can infer copying through two main factors: access to the work and substantial similarity between the works.

Access is established when the plaintiff shows that the defendant had an opportunity to view or copy the work. Evidence of access may include instances where a third party had possession of the plaintiff's work, but mere speculation or unsupported assertions are insufficient to prove access. A plaintiff must demonstrate a "reasonable possibility" for the defendant to have accessed the work, as a mere "bare possibility" is inadequate. Overall, the case hinges on the interplay of these elements—access and substantial similarity—as fundamental to the determination of copyright infringement.

A copyright infringement claim can succeed without proving access if there is "striking similarity" between the works, which negates the possibility of independent creation. This level of similarity must intrude into the protection of the copyrighted work, and the defendant must have had access to it, regardless of the plaintiff's inability to provide extrinsic evidence. Typically, in infringement cases, access is demonstrable, making the proof of "substantial similarity" more challenging. Courts utilize various tests for assessing substantial similarity, with the traditional "ordinary observer" test relying on the overall impression of the works rather than expert analysis. The Second Circuit distinguishes between two elements in substantial similarity cases: whether the defendant copied from the plaintiff's work and whether that copying constitutes improper appropriation, with expert testimony allowed only for the first element. The Ninth Circuit employs a two-part test consisting of an extrinsic test, which permits expert testimony to assess specific similarities, and an intrinsic test, which evaluates substantial similarity from the ordinary person's perspective without expert input. The extrinsic test examines concrete similarities in plot, themes, dialogue, mood, setting, pace, characters, and sequence of events, establishing a factual issue in copyright litigation.

The court has not previously adopted refined versions of the substantial similarity test, leading the district court to use the Ninth Circuit's approach. However, during the appeal, the court adopted the District of Columbia Circuit's test, which involves two steps: identifying protectable aspects of the artist's work and assessing whether the allegedly infringing work is substantially similar to those protectable elements. This new test aligns more closely with the Ninth Circuit's test than with the Second Circuit's. 

Key differences remain, particularly in the standard for allowing expert testimony in the first step, which is more stringent than in the Ninth Circuit's test. The first part of the court's test emphasizes filtering out unoriginal, unprotectable elements. Determining which parts of a work are protectable is complex and often requires ad hoc decisions, as copyright law mandates that only original expressions are protected. 

To establish copyright infringement, a plaintiff must demonstrate copying of original elements of the work. Originality is a constitutional requirement, but the threshold is low; even minimal creativity suffices for copyright eligibility. A crucial distinction in copyright cases is between ideas and their expressions, as copyright protects only the expression of ideas, not the ideas themselves. Courts utilize the abstraction test to differentiate between these concepts.

Multiple patterns of increasing generality can apply to works, particularly plays, as more specific details are omitted. At some point, these abstractions cease to be protected, as a playwright cannot claim ownership over unexpressed ideas. This concept is illustrated in Nichols v. Universal Pictures Corp., where the distinction between protectable expression and unprotectable ideas is considered on a spectrum. However, no definitive line exists for when an idea becomes an expression, making such determinations case-specific.

In literary and cinematic works, elements derived from unprotectable ideas are termed scènes faire. These are incidents, characters, or settings that are essential or standard for a specific theme, as established in Kohus and Sturdza. For example, if Shakespeare's Twelfth Night were copyrighted, a character resembling Sir Toby Belch might infringe, but a character merely sharing a riotous knight's traits would not, as those traits are considered unprotectable ideas. Thus, less developed characters are less likely to be copyrighted.

Further examples of scènes faire include common elements in realistic portrayals of police work, such as drunks or foot chases, which are not protectable, as noted in Walker v. Time Life Films. Similarly, settings in works like Dinosaur World and Jurassic Park are also considered scènes faire due to their reliance on the unprotectable concept of a dinosaur zoo. Consequently, while works may exhibit substantial similarities, the foundational elements remain unprotected, emphasizing the commonality of certain themes in creative works.

Establishing copyright infringement involves evaluating the degree of substantial similarity between works, where duplication or near identity is not a requirement. A defendant can be found liable if they copy significant portions of a plaintiff's narrative, regardless of whether they add original content elsewhere. Even minor appropriations of a copyrighted work can lead to infringement if the copied element is qualitatively significant. The assessment of substantial similarity may hinge on whether an ordinary observer can recognize the copied work as derived from the original. Copyright protection is typically afforded to the combination of various elements within a work rather than isolated lines of dialogue, which are not automatically protected. A jury may find substantial appropriation based on the overall impact of similarities, but random similarities dispersed throughout the works do not suffice to demonstrate substantial similarity. The crucial consideration is whether a lay observer would view the works as a whole as substantially similar.

The standard for appellate review of a motion for judgment as a matter of law in copyright infringement cases hinges on whether a reasonable jury could find in favor of the non-moving party based on the law and evidence. In determining substantial similarity, jurors not only assess historical facts but also act as a proxy for the works' intended audience, considering how exposure to the alleged infringing work might affect the market for the copyrighted work. This subjectivity makes it crucial to approach summary judgment cautiously, particularly in favor of defendants. Nonetheless, courts can and do grant summary judgment in copyright cases, especially regarding substantial similarity, as this issue often relies on the works themselves rather than credibility determinations typically reserved for juries. Judges, while not literary critics, possess the necessary skills to compare works for substantial similarity.

The case at hand involves a claim by Murray Hill that the movie JATW infringes on its copyright of the CTBC screenplay. CTBC follows Bess Parker, a struggling single mother, and her son Tommy, who is fixated on an action figure. The narrative centers on Bess's attempts to purchase the toy for Tommy, culminating in a confrontation with Clare, a wealthy woman who takes the toy from her. This scenario sets the stage for examining the similarities between the two works.

Bess meets Steve, the brother of her employer Carol, while cleaning Carol's house. Unbeknownst to her, Steve is the Santa Claus she later takes her son Tommy to see, leading to a date between them after a confrontation regarding a promised toy. Bess learns from Carol that Clare's company plans to demolish her apartment building. While seeking a loan at a bank, Bess accidentally causes a scene with a toy gun. She meets Eric, Clare's husband, during her next cleaning job, leading to an awkward misunderstanding. At a party, Bess realizes Clare's connection to her life—Clare is the owner of the toy store where the action figure was taken from her.

Bess enjoys sledding and shopping with Steve, while unaware of his wealth as a toy store owner. Bess insists on shopping at discount stores, reflecting her financial struggles. At Clare's house, Bess discovers a bag of Action Man toys and hides one in protest against Clare's greed. After learning of Steve's true identity, Bess angrily leaves him. Motivated by her son’s enthusiasm for the Action Man figure, Bess breaks into Clare's home to retrieve the toy she hid, but is mistaken for a burglar by Clare and narrowly escapes.

In a subsequent visit, Bess attempts to return the Action Man figure but is caught by Clare, leading to chaos and her fleeing the scene. Meanwhile, Bess's mother contemplates a lottery win that could have resolved their financial woes. The story culminates with Bess's arrest by police, who mistake her for the neighborhood burglar, just as her mother discovers a missed opportunity to play the lottery.

Bess's mother confronts Clare at her home, angry over Bess's arrest. After the party, Clare, dressed as Santa, initially hands out gifts to poor children but later decides to give all her Christmas presents to a homeless shelter after learning about the children's struggles. Bess is released on bail and cared for by a neighbor while Eric captures the real Night Prowler. Realizing her mistake in identifying Bess, Clare visits Bess's apartment, tears up an eviction notice, and offers a toy, which Bess declines, prioritizing her son’s need for her presence. The next morning, Tommy is understanding about not receiving the toy but finds an Action Man figure, believing it to be from the real Santa. As the story closes, three Santas of different ethnicities are seen heading to the shelter.

The narrative shifts to Howard Langston, a busy CEO who misses his son Jamie's karate award ceremony due to work. To make up for it, he promises to buy Jamie a Turbo Man action figure for Christmas. On Christmas Eve, he lies about having purchased the toy and rushes to find it. At a toy store, he meets Myron, a mailman also seeking the figure. After being unable to find the toy at several stores, they learn of a shipment at a mall. Chaos ensues when a riot breaks out for the limited figures. A mall Santa leads Howard to a warehouse where he buys a counterfeit Turbo Man for $300, but it falls apart as police raid the place, leading to Howard's narrow escape while his SUV is stolen.

Howard and Myron encounter each other at a coffee shop, where Myron attributes his misfortunes to not receiving a popular childhood toy. A radio contest for a Turbo Man figure prompts them to race to a nearby radio station after breaking a payphone. Howard, fit and faster, arrives first and breaks into the broadcast booth, followed by Myron, who threatens the host with a mail bomb to secure the toy. The host reveals the prize is merely a gift certificate, leading Howard to leave. Myron's bomb turns out to be harmless, but he is later apprehended by a SWAT team, managing to escape with another bomb that detonates, singeing the team leader, Hummel.

Defeated, Howard returns home to find Ted and Liz preparing their Christmas tree. In a fit of jealousy, he breaks into Ted's house to steal the Turbo Man figure. A chaotic encounter with Ted's pet reindeer results in property damage, and he is caught with the stolen toy. Liz, upset with Howard, leaves for a parade with Jamie, Ted, and Ted's son. After dropping off the children, Ted attempts to kiss Liz, who rebuffs him. Meanwhile, Howard unwittingly becomes part of the parade as Turbo Man, where he gives his son Jamie the Turbo Man figure. Myron, disguised as Dementor, tries to steal the figure, leading to a staged fight that Howard wins. Howard reveals his identity to Jamie, who decides he does not need the toy because he has Turbo Man as a father, giving the figure to Myron instead. The family reconciles, and in a post-credit scene, Liz questions Howard about her Christmas gift, prompting his realization that he forgot to buy her one.

In a separate legal context, the excerpt notes that most issues in a copyright infringement claim are settled, with the jury finding substantial similarity between the CTBC screenplay and the JATW movie, supporting Murray Hill's claim against Fox. Fox's appeal hinges on the denial of its motions for judgment as a matter of law regarding substantial similarity, which can only be granted when no reasonable juror could have ruled for the opposing party.

Fox's request for judgment as a matter of law primarily rests on the six-page "treatment" registered by Kornfield, prior to Murray Hill demonstrating that Fox had access to the CTBC screenplay. Murray Hill proposed various theories regarding Fox's potential access to the screenplay, but the district court deemed these theories speculative, a decision that Murray Hill did not contest. The court noted that striking similarity could substitute for proof of access, yet determined that the similarities between the CTBC screenplay and the JATW treatment were insufficient to eliminate all possibilities of independent creation. 

Murray Hill's assertion of substantial similarity was based on an expert's list of twenty-four similarities, but only six of these were not present in the independently created treatment. These six similarities included specific character actions and situations, such as children's drawings and interactions with toy store clerks. However, the court found that these similarities were weak, differing significantly in expression and being common in literature and cinema. 

The court emphasized that when evaluating slight similarities holistically, they do not collectively prove substantial similarity if they are not thematically connected. Thus, filtering out the other similarities would justify summary judgment for Fox. Additionally, the court confronted the issue of whether elements found in a defendant's non-infringing work should be excluded from substantial similarity analysis. The prevailing legal principle indicates non-protectible elements must be filtered out, but the case at hand raised questions about whether independently created elements should also be discounted. Precedents from other circuits suggest that even protectible elements could be filtered out under certain conditions, as illustrated in the Apple Computer v. Microsoft Corp. case, where the distinction between licensed and unlicensed features was crucial in determining infringement.

The excerpt outlines the legal framework for determining copyright infringement through substantial similarity analysis. It emphasizes that only protectible elements of a work, which have been used without the author's permission, can be compared when evaluating illicit copying. The Apple court's decision broadened the application of filtering to include protectible elements utilized with the copyright owner's consent. A specific case, Sturdza v. United Arab Emirates, is referenced where an architect alleged copyright infringement regarding an embassy design. The court excluded elements already present in a prior work submitted by another architect, which the defendant had accessed before the plaintiff's drawings. This exclusion was upheld as the plaintiff did not appeal. The passage argues that if the defendant's work includes elements from their own prior work, no inference of copying can be drawn, supporting the notion that elements created before access to a plaintiff's work should be filtered out in the substantial-similarity analysis. Consequently, the court concluded that a reasonable jury could not find substantial similarity based solely on the remaining minor elements, leading to the reversal of the district court's judgment in favor of Fox. The text also notes that while ideas are not protectible, expressions derived from them may be unprotected if they are dictated by the idea itself.