Notes & Comment
Vol. 2004, No. 4
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The Unsolicited Screenplay Cometh – Copyright infringement claims by unpublished authors
Everyone dreams of writing the next great American novel or the screenplay that becomes an award-winning movie. But for each artistic "homerun" there are vastly more creative submissions sent to publishers, networks and studios that never find an audience. A few would-be authors, fearful their ideas have been stolen, even turn to the courts after discovering that some movie mogul or publishing house has produced their story. Yet such claims often share a common problem: establishing that the copycat book or movie amounts to a technical copyright infringement of your work.
That was the situation in Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corporation, decided by the U.S. Court of Appeals for the Sixth Circuit (No. 97-60405, March 19, 2004, File Name 04a0082p.06 (available at www.ca6.uscourts.gov, Opinions Tab, Search Opinions Tab, enter case name, case name, or File Name)). There, the owner of a rejected screenplay sued Twentieth Century Fox (Fox) for copyright infringement and won a jury verdict at trial, only to have its victory reversed on appeal.
"Jingle All The Way”
In 1995, Fox began production of a Christmas movie entitled "Jingle All The Way" ("Jingle") based on a 1993-1994 screenplay by a Fox writer about his experiences trying to purchase a hard-to-find action toy for his son's birthday. The screenplay's "Treatment" (a preliminary summary) had been registered with the Writer's Guild of America in January 1994 and a full screenplay was registered in July of that year. Revisions continued through 1995 when production on the movie began.
In 1988, a Detroit schoolteacher wrote a screenplay entitled "Could This Be Christmas" ("CTBC") about his difficulties finding an action toy for his son at Christmastime. Copyrights were registered in 1989 and 1991. Between 1989-1993, the author tried to sell the screenplay, eventually reaching a deal with Murray Hill Publications, Inc., the plaintiff in the case. In 1994, Murray Hill sent the CTBC screenplay to Fox's Family Film division. There the CTBC script was given to a friend of the Jingle author who also later worked on the Jingle script. Ultimately, Fox rejected the CTBC script but released Jingle in 1996, starring a certain future California governor, and it enjoyed great commercial success.
In December 1997, Murray Hill filed a copyright infringement lawsuit against Fox, claiming that Jingle infringed the CTBC screenplay's copyright. Murray Hill won a jury verdict of infringement and substantial damages. But the Court of Appeals reversed.
Summary of the Applicable Law
Copyright law protects expression, not ideas. The fact that Jingle and CTBC had the same premise was not enough. To succeed in a copyright infringement case, a plaintiff must show ownership of a valid copyright and copying by the defendant. Proving each element of a copyright claim -- a valid copyright and unlawful copying of that work -- is easier said than done.
First, the "copied" work must be copyrightable (for example, expression, not idea; originality; fixation in a tangible medium), and the copyright must be registered. See, 17 U.S.C. § 102(a).
Next, the evidence must show that the defendant unlawfully copied the work. Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corporation involved this second element: did Fox steal the CTBC screenplay when it made Jingle?
Evidence of actual copying is rare. To otherwise prove copying, most plaintiffs rely on an inference that can be established by two factors: access by the defendant to the plaintiff's work and substantial similarity between the two works. In short, if you have "access" to my screenplay and your screenplay is "substantially similar" to mine, the courts may infer that you've copied my script. But what do these terms "access" and "substantial similarity" really mean?
Access, the Court said in Murray Hill Publications, can be shown by a "reasonable probability" that the defendant saw the plaintiff's work. But even if no such evidence exists, access can be inferred from a "striking similarity" between the competing works.
Substantial similarity, the court determined, is established by different jurisdictions in different ways. In Murray Hill Publications, the Sixth Circuit adopted a standard much like that employed by the U.S. Court of Appeals for the Ninth Circuit. The competing works are to be evaluated under a two-step process that uses extrinsic (objective) and intrinsic (subjective) tests, in that order.
In the Ninth Circuit, extrinsic (objective) analysis of the competing works involves an comparison, often by experts, of things such as plot, theme, dialogue, mood, setting, pace, characters and story structure. The extrinsic test in the Sixth Circuit, the Murray Hill Court held, is more "free form" and requires filtering out unprotected elements of the plaintiff's work. In other words, during the objective evaluation, one must eliminate from the comparison those elements of the plaintiff's work that are not protected under copyright law.
Intrinsic analysis, the next step in the process, involves a fact-based subjective analysis of substantial similarity by the jury, which is better equipped to serve as a "proxy" audience.
At the risk of oversimplification, the following checklist describes how one might evaluate a copyright infringement claim in the Sixth Circuit based upon the Murray Hill Publications opinion:
Ownership of Copyright
expression or idea? and
required originality and
other statutory requirements for copyright ownership
Copying
Actual Copying or
Access and Substantial Similarity
Access
Substantial Similarity
(filtering out unprotectable and preexisting elements) and
Filtering Out Preexisting Elements
The Murray Hill Publications decision turned on the trial judge's improper evaluation of the extrinsic (objective) evidence during the substantial similarity analysis. Again, access + substantial similarity = a defendant who has some explaining to do.
Substantial similarity first requires the objective evaluation, then the subjective one. During the objective evaluation in Murray Hill Publications, the plaintiff's expert had compiled a list of some twenty-four elements that the competing works purportedly shared in common. Thereafter, the intrinsic (subjective) question of substantial similarity was submitted to the jury and they reached a verdict of copyright infringement for the plaintiff.
But wait a minute! The Sixth Circuit held that the trial court should never have submitted the case to the jury because the extrinsic evidence did not establish copyright infringement by "Jingle All The Way". All but six of the plaintiff's twenty four similarities predated or existed independently of the CTBC screenplay and should have been filtered out (eliminated) from the extrinsic comparison. The six remaining elements, the Court decided, were insignificant to support an objective finding of substantial similarity. Thus, since there was insufficient objective evidence of substantial similarity, the jury should never have been allowed to answer the subjective question about copying.
Summary and Conclusion
The Sixth Circuit's recent decision in Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corporation is not landmark copyright infringement law and only breaks new ground for green eyeshade-types on the narrow question of how one evaluates objective evidence of substantial similarity in that circuit. In a broader sense, however, the decision shows how hard it is for unpublished authors to prove that a publisher or studio has ripped off their brilliant work.
© Matthew Joseph 2004. Law Offices of Matthew Joseph, San Mateo, California, practices in the areas of intellectual property licensing, commercial real estate leasing, and corporate and business transactions. No legal advice is intended by the information provided herein and recipients should independently consult counsel before taking any action related to this subject matter.