736 F.2d 485 (9th Cir. 1984), 80-6083, Landsberg v. Scrabble Crossword Game Players, Inc.

Docket Nº:80-6083, 82-5467, 82-5504.
Citation:736 F.2d 485
Party Name:Mark LANDSBERG, Plaintiff-Appellee, v. SCRABBLE CROSSWORD GAME PLAYERS, INC.; Selchow & Righter Co.; and Crown Publishers, Defendants-Appellants. Mark LANDSBERG, Plaintiff-Appellee-Cross-Appellant, v. CROWN PUBLISHERS, INC.; Selchow & Righter Co.; and Scrabble Crossword Game Players, Inc., Defendants-Appellants, Cross-Appellees.
Case Date:March 05, 1984
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 485

736 F.2d 485 (9th Cir. 1984)

Mark LANDSBERG, Plaintiff-Appellee,



Co.; and Crown Publishers, Defendants-Appellants.

Mark LANDSBERG, Plaintiff-Appellee-Cross-Appellant,


CROWN PUBLISHERS, INC.; Selchow & Righter Co.; and

Scrabble Crossword Game Players, Inc.,

Defendants-Appellants, Cross-Appellees.

Nos. 80-6083, 82-5467, 82-5504.

United States Court of Appeals, Ninth Circuit

March 5, 1984

Argued and Submitted April 8, 1983.

As Amended on Denial of Rehearing

and Rehearing En Banc July 3, 1984.

Page 486

H. Michael Brucker, Oakland, Cal., for Landsberg.

Walter D. Ames, Watson, Cole, Grindle & Watson, Washington, D.C., for defendants-appellants.

Appeal from the United States District Court for the Central District of California.

Before GOODWIN, TANG and FLETCHER, Circuit Judges.

GOODWIN, Circuit Judge:

Mark Landsberg recovered judgments of copyright infringement under California and federal law. Defendants appeal.


Landsberg developed a systematic strategy for playing Scrabble and became the acknowledged Scrabble champion of Southern California. He committed his system to writing in a manuscript entitled "Championship Scrabble Strategy." In 1972 Landsberg took steps to publish the manuscript and requested permission to use the word "Scrabble" from Selchow and Righter (S & R), owner of the Scrabble trademark and producer of Scrabble brand crossword games. S & R requested that Landsberg send a copy of his manuscript to them for evaluation, and he did so.

Page 487

S & R had been considering the preparation of a Scrabble Players Handbook and had hired an editor, but had developed nothing of substance at the time the Landsberg manuscript arrived. S & R immediately sent a copy of Landsberg's manuscript to Michael Senkiewicz, an expert Scrabble player, and asked that he evaluate Landsberg's work. Senkiewicz found on the whole that it was excellent. S & R then entered into a contract with Senkiewicz to produce a section on Scrabble strategy for the S & R Handbook. Part of the contract included an outline that the district court found Senkiewicz had copied from Landsberg's manuscript. Meanwhile, S & R entered into "negotiations" with Landsberg for rights in his manuscript, which the district court found were a bad faith tactic to keep Landsberg dangling while S & R was preparing its own Handbook based on Landsberg's work. Landsberg finally demanded that S & R return or destroy all copies of his manuscript in S & R's possession. The district court found that S & R not only kept copies, but Senkiewicz used his copy of the manuscript as the basis for his section of the Scrabble Players Handbook. S & R severed its relationship with Landsberg shortly before S & R brought out its own Handbook.

Landsberg sued S & R, its subsidiary, Scrabble Crossword Game Players, Inc., and Crown Publishers in Los Angeles County Superior Court on several causes of action, including "piracy of literary property" (infringement of common law copyright) and breach of contract. Defendants successfully moved to have the case removed to United States District Court pursuant to 28 U.S.C. Sec. 1441. After a blizzard of motions by S & R, many found obstructionist and frivolous by the district court, the court tried the case and rendered judgment for Landsberg on his common-law copyright cause of action.

In its findings of fact, the court found that denials of bad faith use of Landsberg's manuscript and copying from it by Senkiewicz and S & R were "not to be believed" and were "untrue." The court found that S & R at all times had access to Landsberg's manuscript, surreptitiously retained copies of it and engaged in wholesale copying of both Landsberg's ideas and the form of expression that he used in his manuscript.

Although S & R did not use verbatim portions of Landsberg's work, the trial court found that S & R had paraphrased a significant part of what Landsberg had written and created a Handbook substantially similar to Landsberg's manuscript. The court granted Landsberg actual and exemplary damages. It also awarded attorneys' fees and costs under 17 U.S.C. Sec. 505 and the vexatious litigant rule.

S & R ignored the judgment and continued to sell and print its Handbook. Landsberg sued again for continuing copyright infringement, this time under the 1976 Copyright Act, Title 17 U.S.C., rather than California law because of the preemptive effect of 17 U.S.C. Sec. 301(a). The court granted Landsberg summary judgment and damages, but denied his claim for further exemplary damages because there is no provision for such damages under the 1976 Copyright Act.

S & R appeals from both judgments of the district court. Landsberg appeals the denial of exemplary damages in his second action.


A. Applicable law.

California law governs Landsberg's first action, because his claim states a cause of action arising from "undertakings commenced before January 1, 1978," 17 U.S.C. Sec. 301(b)(2), and federal law governs Landsberg's second action, because it complains of infringement taking place after that date. But, at least as far as the question of infringement goes, it makes no difference which law applies. California appears to follow federal copyright cases on the question of infringement. See, e.g., Weitzenkorn v. Lesser, 40 Cal.2d 778, 256 P.2d 947, 956-957 (1953); Stanley v. Columbia Broadcasting System, 35 Cal.2d 653, 221

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P.2d 73, 78 (1950); Barsha v. Metro-Goldwyn-Mayer, 32 Cal.App.2d 556, 560, 90 P.2d 371, 374 (1939). Neither Landsberg nor S & R have cited California cases to us on the question of infringement, relying instead on federal cases. Therefore we will assume that California law parallels federal law on the question of infringement and analyze this case according to federal law.

B. Infringement.

To make out infringement, the plaintiff must establish that he owns the copyright in the work in question, that the defendant had access to the copyrighted work, and that there is "substantial similarity not only of the general ideas [of the works] but of the expression of those ideas as well." Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977). In this case, it is undisputed that Landsberg owns the copyright in his work, and that S & R had access to it. The case turns on the issue of substantial similarity.

Similarity of expression must be established because it is an axiom of copyright law that copyright protects only an author's expression of an idea and not the idea itself. 17 U.S.C. Sec. 102(b); Mazer v. Stein, 347 U.S. 201, 217-218, 74 S.Ct. 460, 470-471, 98 L.Ed. 630 (1954). 1 Corollary to this axiom is a strong policy permitting all to use freely the ideas contained in a copyrighted work so long as copyrighted expression is not appropriated.

One consequence of the policy in favor of free use of ideas is that the degree of substantial similarity required to show infringement varies according to the type of work and the ideas expressed in it. Cf. Krofft, 562 F.2d at 1167-68. Some ideas can be expressed in myriad ways, while others allow only a narrow range of expression. Fictional works generally fall into the first category. The basic idea of a fictional work might be that classic, boy meets girl. This idea can be expressed, as it has been through thousands of years of literature, with infinite variations in setting, sequence of incident, and characterization. An author wishing to write yet another work using the "boy meets girl" idea can choose from a wide range of materials in composing his or her own expression of the idea. Therefore a new work incorporating that idea need not be a verbatim copy or close paraphrase of an earlier work to infringe that work. A resemblance in details of setting, incident, or characterization that falls short of close paraphrase may be enough to establish substantial similarity and infringement. See, e.g., Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936). Similarly, the Krofft court noted that the defendants there could choose from myriad ways to create puppets that would express the idea contained in plaintiff's television series--"a fantasyland filled with diverse and fanciful characters in action." 562 F.2d at 1165. As a result, although...

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