Seiler v. Lucasfilm, Ltd., 85-1955

• Decision Date: 26 January 1987
• Docket Number: No. 85-1955,85-1955
• Citation: 808 F.2d 1316
• Parties: 1987 Copr.L.Dec. P 26,057, 1 U.S.P.Q.2d 1789, 22 Fed. R. Evid. Serv. 601 Lee M. SEILER, Plaintiff-Appellant, v. LUCASFILM, LTD., Industrial Light and Magic, Twentieth Century-Fox Film Corporation, George Lucas, Jr., and Joseph E. Johnston, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1316

808 F.2d 1316

1987 Copr.L.Dec. P 26,057, 1 U.S.P.Q.2d 1789,

22 Fed. R. Evid. Serv. 601

Lee M. SEILER, Plaintiff-Appellant, v. LUCASFILM, LTD., Industrial Light and Magic, Twentieth Century-Fox Film Corporation, George Lucas, Jr. and Joseph E. Johnston, Defendants-Appellees.

No. 85-1955.

United States Court of Appeals Ninth Circuit.

Argued and Submitted April 17, 1986.

Decided Aug. 26, 1986.

Modified Jan. 26, 1987.

Bronson, Bronson & McKinnon, Elliot L. Bien, San Francisco, Cal., for plaintiff-appellant.

Nutter, Bird, Marella, Boxer, Wolpert & Matz, Joel Boxer, Los Angeles, Cal.; and Keker & Brockett, John Keker and Robert Van Nest, San Francisco, Cal., for defendants-appellees.

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

Before FARRIS and BOOCHEVER, Circuit Judges, and KEEP, ^* District Judge.

FARRIS, Circuit Judge:

Lee Seiler, a graphic artist and creator of science fiction creatures, alleged copyright infringement by George Lucas and others who created and produced the science fiction movie "The Empire Strikes Back." Seiler claimed that creatures known as "Imperial Walkers" which appeared in The Empire Strikes Back infringed Seiler's copyright on his own creatures called "Garthian Striders." The Empire Strikes Back appeared in 1980; Seiler did not obtain his copyright until 1981.

Because Seiler wished to show blown-up comparisons of his creatures and Lucas' Imperial Walkers to the jury at opening statement, the district judge held a pre-trial evidentiary hearing. At the hearing, Seiler could produce no originals of his Garthian Striders nor any documentary evidence that they existed before The Empire Strikes Back appeared in 1980. The district judge, applying the best evidence rule, found that Seiler had lost or destroyed the originals in bad faith under Fed.R.Evid. 1004(1) and denied admissibility of any secondary evidence, even the copies that Seiler had deposited with the Copyright Office. With no admissible evidence, Seiler then lost at summary judgment.

FACTS

Seiler contends that he created and published in 1976 and 1977 science fiction creatures called Garthian Striders. In 1980, George Lucas released The Empire Strikes Back, a motion picture that contains a battle sequence depicting giant machines Seiler contends that Lucas' Walkers were copied from Seiler's Striders which were allegedly published in 1976 and 1977. Lucas responds that Seiler did not obtain his copyright until one year after the release of The Empire Strikes Back and that Seiler can produce no documents that antedate The Empire Strikes Back.

called Imperial Walkers. In 1981 Seiler obtained a copyright on his Striders, depositing with the Copyright Office "reconstructions" of the originals as they had appeared in 1976 and 1977.

Because Seiler proposed to exhibit his Striders in a blow-up comparison to Lucas' Walkers at opening statement, the district judge held an evidentiary hearing on the admissibility of the "reconstructions" of Seiler's Striders. Applying the "best evidence rule," Fed.R.Evid. 1001-1008, the district court found at the end of a seven-day hearing that Seiler lost or destroyed the originals in bad faith under Rule 1004(1) and that consequently no secondary evidence, such as the post-Empire Strikes Back reconstructions, was admissible. In its opinion the court found specifically that Seiler testified falsely, purposefully destroyed or withheld in bad faith the originals, and fabricated and misrepresented the nature of his reconstructions. The district court granted summary judgment to Lucas after the evidentiary hearing.

On appeal, Seiler contends 1) that the best evidence rule does not apply to his works, 2) that if the best evidence rule does apply, Rule 1008 requires a jury determination of the existence and authenticity of his originals, and 3) that 17 U.S.C. Sec. 410(c) of the copyright laws overrides the Federal Rules of Evidence and mandates admission of his secondary evidence.

The appeal was timely; this court has jurisdiction under 28 U.S.C. Sec. 1291. Review of summary judgment is de novo. Ashton v. Cory, 780 F.2d 816, 818 (9th Cir.1986). The issues presented are questions of law, reviewable de novo. See United States v. McConney, 728 F.2d 1195, 1201 (9th Cir.1984) (en banc).

DISCUSSION

1. Application of the best evidence rule.

The best evidence rule embodied in Rules 1001-1008 represented a codification of longstanding common law doctrine. Dating back to 1700, the rule requires not, as its common name implies, the best evidence in every case but rather the production of an original document instead of a copy. Many commentators refer to the rule not as the best evidence rule but as the original document rule.

Rule 1002 states: "To prove the content of a writing, recording, or photograph, the original writing, recording, or photograph is required, except as otherwise provided in these rules or by Act of Congress." Writings and recordings are defined in Rule 1001 as "letters, words, or numbers, or their equivalent, set down by handwriting, typewriting, printing, photostating, photographing, magnetic impulse, mechanical or electronic recording, or other form of data compilation."

The Advisory Committee Note supplies the following gloss:

Traditionally the rule requiring the original centered upon accumulations of data and expressions affecting legal relations set forth in words and figures. This meant that the rule was one essentially related to writings. Present day techniques have expanded methods of storing data, yet the essential form which the information ultimately assumes for usable purposes is words and figures. Hence the considerations underlying the rule dictate its expansion to include computers, photographic systems, and other modern developments.

Some treatises, whose approach seems more historical than rigorously analytic, opine without support from any cases that the rule is limited to words and figures. 5 Weinstein's Evidence (1983), p 1001(1) at 1001-11; 5 Louisell & Mueller, Sec. 550 at 285.

We hold that Seiler's drawings were "writings" within the meaning of Rule 1001(1); they consist not of "letters, words or numbers" but of "their equivalent." To hold otherwise would frustrate the policies underlying the rule and introduce undesirable inconsistencies into the application of the rule.

In the days before liberal rules of discovery and modern techniques of electronic copying, the rule guarded against incomplete or fraudulent proof. By requiring the possessor of the original to produce it, the rule prevented the introduction of altered copies and the withholding of originals. The purpose of the rule was thus long thought to be one of fraud prevention, but Wigmore pointed out that the rule operated even in cases where fraud was not at issue, such as where secondary evidence is not admitted even though its proponent acts in utmost good faith. Wigmore also noted that if prevention of fraud were the foundation of the rule, it should apply to objects as well as writings, which it does not. 4 Wigmore, Evidence Sec. 1180 (Chadbourn rev. 1972).

The modern justification for the rule has expanded from prevention of fraud to a recognition that writings occupy a central position in the law. When the contents of a writing are at issue, oral testimony as to the terms of the writing is subject to a greater risk of error than oral testimony as to events or other situations. The human memory is not often capable of reciting the precise terms of a writing, and when the terms are in dispute only the writing itself, or a true copy, provides reliable evidence. To summarize then, we observe that the importance of the precise terms of writings in the world of legal relations, the fallibility of the human memory as reliable evidence of the terms, and the hazards of inaccurate or incomplete duplication are the concerns addressed by the best evidence rule. See 5 Louisell & Mueller, Federal Evidence, Sec. 550 at 283; McCormick on Evidence (3d ed. 1984) Sec. 231 at 704; Cleary & Strong, The Best Evidence Rule: An Evaluation in Context, 51 Iowa L.Rev. 825, 828 (1966).

Viewing the dispute in the context of the concerns underlying the best evidence rule, we conclude that the rule applies. McCormick summarizes the rule as follows:

[I]n proving the terms of a writing, where the terms are material, the original writing must be produced unless it is shown to be unavailable for some reason other than the serious fault of the proponent.

McCormick on Evidence Sec. 230, at 704.

The contents of Seiler's work are at issue. There can be no proof of "substantial similarity" and thus of copyright infringement unless Seiler's works are juxtaposed with Lucas' and their contents compared. Since the contents are material and must be proved, Seiler must either produce the original or show that it is unavailable through no fault of his own. Rule 1004(1). This he could not do.

The facts of this case implicate the very concerns that justify the best evidence rule. Seiler alleges infringement by The Empire Strikes Back, but he can produce no documentary evidence of any originals existing before the release of the movie. His secondary evidence does not consist of true copies or exact duplicates but of "reconstructions" made after The Empire Strikes Back. In short, Seiler claims that the movie infringed his originals, yet he has no proof of those originals.

The dangers of fraud in this situation are clear. The rule would ensure that proof of the infringement claim consists of the works alleged to be infringed. Otherwise, "reconstructions" which might have no resemblance to the purported original would suffice as proof for infringement of the original. Furthermore, application of the rule here defers to the rule's special concern for the contents of writings. Seiler's claim depends on the content of the originals, and the rule would exclude reconstituted proof of...