Stillman v. Leo Burnett Co., Inc.

Citation720 F. Supp. 1353
Decision Date15 September 1989
Docket NumberNo. 88 C 10957.,88 C 10957.
CourtU.S. District Court — Northern District of Illinois
PartiesMichael STILLMAN, Plaintiff, v. LEO BURNETT COMPANY, INC., and United Airlines, Inc., Defendants.

Alan F. Curley, C. Philip Curley, Kahn, Robinson & Curley, Chicago, Ill., for plaintiff.

Richard J. O'Brien, Andrew L. Goldstein, Monica Rimai, John Heller, Sidley & Austin, Chicago, Ill., for defendants.

MEMORANDUM OPINION

BRIAN BARNETT DUFF, District Judge.

Plaintiff Michael Stillman has sued defendants Leo Burnett Company, Inc. ("Burnett") and United Airlines, Inc. ("United") for copyright infringement under the Copyright Act, 17 U.S.C. § 501, false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a), and unfair competition under the Illinois Consumer Fraud and Deceptive Business Practices Act ("the Consumer Fraud Act"), ch. 121½, ¶¶ 261 et seq., and the Illinois Deceptive Trade Practices Act, Ill.Rev.Stat., ch. 121½, ¶¶ 311 et seq. Stillman alleges that the defendants copied a "silent" television commercial he had created for Eastern Airlines, Inc. ("Eastern"), and then misrepresented that they had created their commercial through lucky inspiration. The defendants have moved to dismiss all three claims pursuant to Fed.R.Civ.P. 12(b)(6), but this court has converted a portion of the motion to a Rule 56 motion for summary judgment pursuant to Rule 12(b). For the reasons set forth below, the motion will be denied.

FACTS

For the purposes of this motion, the court accepts as true the allegations of the complaint, the facts contained within the complaint's exhibits, and the videotapes (with accompanying storyboards) of the two commercials.1 Stillman is a creative advertising consultant, and the creator and producer of television commercials. In late 1981, he created a commercial for Eastern's Canadian airline passenger market, which aired on Canadian television during 1982 and 1983.

The commercial employed silence as a way of attracting viewer attention to the screen. Of the nine screens in the commercial, the first eight were black with white reverse-type writing. The writing faded in and out from screen to screen—with the exception of the Eastern name and logo, which remained on the screen—and read as follows:

Screen 1:
A SILENT COMMERCIAL FOR
EASTERN SUPER 7'S
Screen 2:
MIAMI EASTERN SUPER 7'S
Screen 3:
7 NIGHTS 8 DAYS CHOICE HOTEL
EASTERN SUPER 7'S
Screen 4:
SCHEDULED ROUND TRIP FLIGHTS
EASTERN SUPER 7'S
Screen 5:
RENTAL CAR UNLIMITED MILEAGE (AND MORE)
EASTERN SUPER 7'S
Screen 6:
ONLY $370 PER PERSON DOUBLE OCCUPANCY
EASTERN SUPER 7'S
Screen 7:
WHY SO QUIET?
EASTERN SUPER 7'S
Screen 8:
BECAUSE THE COMPETITION IS SLEEPING
EASTERN SUPER 7'S

The last screen suddenly broke into color and sound, showing a picture of a sunset and containing a voice-over explaining the point of the silent commercial. The commercial was hugely successful and profitable for Eastern, and was widely discussed in Canadian and American advertising industry circles.

In 1986, after Eastern (inexplicably) decided not to use the silent commercial for its American market, Stillman, who owned the right to it, wrote two letters to United's president suggesting that United engage Stillman to produce silent commercials for United's American market. With the letters, he enclosed copies of the Eastern storyboard, and some ideas about how the silent commercial could be used for United.

United never hired Stillman, but in 1987 it did air a "silent" commercial on American television. This commercial, like the Eastern commercial, contained nine screens, the first eight of which were black with white reverse-type writing fading in and out from screen to screen and reading as follows:

Screen 1:
This is a silent commercial
Screen 2:
The money we saved on sound
Screen 3:
Helps keep our air fares this low:
Screen 4:
United's Chicago $89 from New York
UNITED AIRLINES
Screen 5:
United's Miami $89 from New York
UNITED AIRLINES
Screen 6:
United's Los Angeles $99 from New York
UNITED AIRLINES
Screen 7:
United's San Francisco $99 from New York
UNITED AIRLINES
Screen 7:
United's San Francisco $99 from New York
UNITED AIRLINES
Screen 8:
Call Now XXX-XXX-XXXX XXX-XXX-XXXX XXX-XXX-XXXX or your travel agent
Fares shown are each way with round trip—Restrictions apply. Seats are limited.

The last screen broke into color, showing an airplane taking off over the word "Roarrrrr," but maintaining silence.

The creator and producer of United's silent commercial was Leo Burnett. At the time Leo Burnett created the commercial, it was aware of Stillman's silent commercial for Eastern. Nevertheless, in interviews following the airing of the United commercial, Leo Burnett represented that it had created the silent commercial and that the creation resulted from "lucky inspiration."

In 1988, Stillman applied for and received a Certificate of Registration for his silent commercial from the United States Register of Copyrights. Shortly thereafter, he filed this lawsuit.

DISCUSSION
Copyright Claim

Courts frequently have said that a copyright claim contains only two elements: (1) the plaintiff's ownership of a valid copyright in a work; and (2) the defendant's copying of this work in creating another one. 3 Nimmer on Copyright § 13.01, at XX-X-XX-X (1988); see, e.g., Atari, Inc. v. North American Philips Consumer Electronic Corp., 672 F.2d 607, 614 (7th Cir. 1982). In Atari, the Seventh Circuit elaborated on the second element. According to the Court of Appeals, a plaintiff can establish copying by showing (1) that the defendant had access to the plaintiff's work, and (2) that the two works are substantially similar. 672 F.2d at 614. Further, the Court of Appeals stated, a plaintiff establishes substantial similarity by showing (1) that "the defendant copied from the plaintiff's work and (2) that the copying, if proven, went so far as to constitute an improper appropriation." Id.; accord Evans Newton, Inc. v. Chicago Systems Software, 793 F.2d 889, 894 (7th Cir.1986).

At first blush, this framework appears circular: To prove copying, the plaintiff must prove substantial similarity; and to prove substantial similarity, he must prove copying. See Nash v. CBS, Inc., 704 F.Supp. 823, 826 (N.D.Ill.1989). The confusion lies in the different meaning of the word "copying" in copyright law.

The copyright laws serve to promote the "progress of science and useful arts" by protecting the labors of those who create original works and thereby ensuring the profitability of their endeavors and their willingness to bring novel ideas to the public. Sony Corp. v. University City Studios, Inc., 464 U.S. 417, 428-29, 104 S.Ct. 774, 781-82, 78 L.Ed.2d 574 (1984). Too much protection, however, would undermine the goal: If authors, by publishing their works, could remove the ideas incorporated in them from the public domain, then they could stifle, rather than advance, the development and exploitation of new ideas. 3 Nimmer on Copyright § 13.03A (1988). To skate the thin line between too much and too little protection, the copyright laws have come to distinguish between the expression of ideas on the one hand, and the ideas themselves on the other. Authors may protect the former; the latter remain freely available for other authors to develop and exploit. See 17 U.S.C. § 102(b);2 Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.1976).

Copying, as an element of a copyright claim, refers to the ultimate legal issue of whether the defendant violated the copyright laws by reproducing protectible expression from the plaintiff's work. See Rockford Map Publishers, Inc. v. Directory Service Co. of Colorado, Inc., 768 F.2d 145, 149 (7th Cir.1985). Copying as a prong of substantial similarity, by contrast, is limited to the purely factual issue of whether the defendant used the plaintiff's work as a starting point for his own. See Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946). Thus, a defendant who has copied from a plaintiff's work as a factual matter—that is, by employing the plaintiff's ideas, procedures or techniques—may not have copied as a legal matter; the difference between the two lies in the second prong of the substantial similarity inquiry —i.e., unlawful appropriation. If a defendant has not copied something protected by the copyright laws—specifically, the plaintiff's expression of his ideas—then his copying will not subject him to liability. Sid & Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157, 1163-64 (9th Cir.1977). Thus, when the Seventh Circuit stated in Atari that, in effect, a plaintiff must establish copying in order to prove copying, what it must have meant was that the plaintiff must establish at least permissible copying as a prerequisite to proving illicit copying.

Yet, with this inexactitude in the Atari framework resolved, others emerge. If a defendant must prove copying in order to prove substantial similarity, why must he then prove access in order to establish an infringement? After all, copying, even in the permissible sense, clearly requires that the defendant have had access to—indeed, have relied upon—the plaintiff's work in creating the new one. See Whelan Associates v. Jaslow Dental Laboratory, 797 F.2d 1222, 1232 (3d Cir.1986). Moreover, although it is clear why a plaintiff must show improper appropriation in order to prove a copyright violation, it is difficult to see why such appropriation stands as a prong of substantial similarity, rather than as a separate element of the copyright cause of action. Substantial similarity, in the context of the Atari framework (672 F.2d at 614), is merely one of two elements—the other being access—that must be proved in order to permit an inference that the defendant usurped material from the plaintiff's work; this inference arises, however, upon proof of substantial similarity between even nonprotectible elements of the two works, without any need to prove that what was...

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