Frybarger v. International Business Machines Corp.

• Decision Date: 10 March 1987
• Docket Number: No. 86-2004,86-2004
• Citation: 812 F.2d 525
• Parties: 1987 Copr.L.Dec. P 26,073, 2 U.S.P.Q.2d 1135 Anthony James FRYBARGER, Plaintiff-Appellant, v. INTERNATIONAL BUSINESS MACHINES CORPORATION, Gebelli Software, Inc., and Nasir Gebelli, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 525

812 F.2d 525

1987 Copr.L.Dec. P 26,073, 2 U.S.P.Q.2d 1135

Anthony James FRYBARGER, Plaintiff-Appellant, v. INTERNATIONAL BUSINESS MACHINES CORPORATION, Gebelli Software, Inc., and Nasir Gebelli, Defendants-Appellees.

No. 86-2004.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Jan. 14, 1987.

Decided March 10, 1987.

George M. Schwab, San Francisco, Cal., for plaintiff-appellant.

Paul C. Saunders, New York City, R. Michael West, Sacramento, Cal., for defendants-appellees.

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

Before NELSON, KOZINSKI and NOONAN, Circuit Judges.

NELSON, Circuit Judge:

Anthony James Frybarger appeals from a summary judgment in favor of IBM Corporation Frybarger only appeals the summary judgment on his federal causes of action. This court has jurisdiction under 28 U.S.C. Sec. 1291. We affirm.

Inc., Nasir Gebelli, and Gebelli Software, Inc. ("Gebelli"), in his copyright infringement and Lanham Act action. Frybarger claims that Gebelli copied protected elements of Frybarger's "TRICKY TRAPPER" drawings, computer program and videogame, in Gebelli's "MOUSER" storyboard, computer program and videogame, which Gebelli licensed to IBM for use with its PC Jr. personal computer. Frybarger brought an action in United States District Court for the Eastern District of California, alleging federal causes of action for copyright infringement under 17 U.S.C. Secs. 101-810 (1982), and unfair competition under the Lanham Act, 15 U.S.C. Secs. 1051-1127 (1982), as well as pendent state law claims for misappropriation of trade secrets, unfair competition, conversion and unjust enrichment. The district court granted IBM's motion for summary judgment on the federal causes of action concluding, as a matter of law, that no reasonable jury could find Gebelli's works substantially similar to Frybarger's works. The district court then dismissed Frybarger's state law claims without prejudice.

FACTS

Frybarger was employed by Gebelli in 1982. During the Summer of 1982, Frybarger submitted design drawings and a flow chart describing his "TRICKY TRAPPER" videogame to Gebelli pursuant to a confidential disclosure agreement. In addition, Frybarger had several conversations with Nasir Gebelli and Gebelli employees regarding his "TRICKY TRAPPER" videogame and provided, at Gebelli's request, an annotated computer program and a playable disk of "TRICKY TRAPPER" in September and November 1982.

During the period of Frybarger's employment, Gebelli had a consulting agreement with IBM regarding the development of electronic videogame programming for the IBM personal computer. On October 19, 1982, Gebelli entered into an agreement with IBM to develop three videogames for the IBM PC Jr. personal computer and submitted storyboards to IBM on November 19, 1982, for two of the proposed videogames. One of the two storyboards was for Gebelli's "MOUSER" videogame. Soon thereafter, Gebelli finished the "MOUSER" electronic videogame, registered the copyrights in it, and IBM began to market and distribute it.

In 1984, Frybarger registered the copyrights in his "TRICKY TRAPPER" videogame. On July 13, 1984, Frybarger filed his first complaint and, on September 24, 1985, an amended complaint, against IBM, Gebelli, and Nasir Gebelli, in United States District Court for the Eastern District of California. In his amended complaint, Frybarger alleged that Gebelli infringed Frybarger's copyrights by using elements of Frybarger's "TRICKY TRAPPER" works in Gebelli's "MOUSER" works, and that Gebelli's infringement constituted unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. Sec. 1125(a). Frybarger also alleged pendent state law claims for misappropriation of trade secrets, unfair competition, conversion, and unjust enrichment. Shortly thereafter, IBM submitted motions for summary judgment and judgment on the pleadings.

On February 10, 1986, the district court held a three and one-half hour hearing on IBM's motions for summary judgment and judgment on the pleadings. At the hearing, the district court viewed "MOUSER" in play on an IBM PC Jr. computer, "TRICKY TRAPPER" in play on an Apple II computer and on videotape, and four other videogames. ¹ The court also examined six color photographs, prepared by IBM, comparing key elements of Frybarger's and Gebelli's videogames, and several affidavits from videogame, programming, and software experts submitted by each side. At the close of the hearing, the court granted IBM's motion for summary judgment on the copyright infringement and Lanham Act causes of action, concluding,

as a matter of law, that no reasonable jury could find Frybarger's and Gebelli's works substantially similar. The court then dismissed Frybarger's state law claims without prejudice. The district court's decision was made applicable to Gebelli and Nasir Gebelli by stipulation of the parties, and judgment was entered on April 11, 1986. Frybarger timely appealed.

DISCUSSION

Summary judgments in copyright infringement cases are subject to de novo review by this court. Berkic v. Crichton, 761 F.2d 1289, 1292 (9th Cir.), cert. denied, --- U.S. ----, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985); Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). "[W]e may affirm if the record, viewed in the light most favorable to the [non-moving party], discloses no genuine issues of material fact and if [the moving party] was entitled to judgment as a matter of law." Fisher v. Dees, 794 F.2d 432, 434 (9th Cir.1986).

I. SUMMARY JUDGMENT

Generally, "summary judgment is not highly favored on the substantial similarity issue in copyright cases." Berkic, 761 F.2d at 1292. See Litchfield, 736 F.2d at 1355 ("Substantial similarity is usually an extremely close issue of fact and summary judgment has been disfavored in cases involving intellectual property") (citing Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1330 n. 6 (9th Cir.1983)). Nonetheless, "the question whether there is substantial similarity of ideas between two works 'may often be decided as a matter of law,' " Berkic, 761 F.2d at 1292 (quoting Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977)) (emphasis added), and there is no special standard for determining " 'whether summary judgment is appropriate on the issue of substantial similarity of expression.' " Id. (quoting See v. Durang, 711 F.2d 141, 142 (9th Cir.1983)) (emphasis added). Thus, "since Krofft, we have frequently affirmed summary judgments in favor of copyright defendants on the substantial similarity issue." Id. (citing Litchfield, 736 F.2d at 1358; Durang, 711 F.2d at 142; Jason v. Fonda, 698 F.2d 966, 967 (9th Cir.1982), incorporating by reference, Jason v. Fonda, 526 F.Supp. 774, 777 (C.D.Cal.1981)).

Summary judgment is clearly appropriate in copyright infringement cases if, after viewing the evidence and drawing every inference in the light most favorable to the nonmoving party, the court concludes that no reasonable jury could find substantial similarity of both ideas and expression between the works at issue. Litchfield, 736 F.2d at 1356. See also Durang, 711 F.2d at 143 ("Summary judgment is proper if reasonable minds could not differ as to the presence or absence of substantial similarity of expression"); Fonda, 526 F.Supp. at 777 ("[S]ummary judgment is proper when the Court determines that the similarity between works is insubstantial as a matter of law.... In other words, ... if it determines that no reasonable trier of fact could find that the plaintiff has satisfied both of the Krofft tests.")

Because plaintiff bears the burden of proving that the works at issue are substantially similar in a copyright infringement case, Litchfield, 736 F.2d at 1356 (citing Sid & Marty Krofft, 562 F.2d at 1164), summary judgment for defendant is appropriate when plaintiff fails to make a sufficient showing that the ideas and expressive elements of the works are substantially similar after defendant has properly identified in a motion for summary judgment that plaintiff has failed to do so. See Celotex Corp. v. Catrett, --- U.S. ----, 106 S.Ct. 2548, 2553-54, 91 L.Ed.2d 265 (1986) (Moving party need only inform the court of the basis of its motion and is then " 'entitled to judgment as a matter of law' [if] the nonmoving party has failed to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof"); Barnes v. Arden Mayfair, Inc., 759 F.2d 676, 680 (9th Cir.1985) (" '[I]f there is no genuine issue of material fact, and if the resisting party does not present a record sufficient to support a reasonable finding in his favor, a district court has a duty to grant the motion for summary judgment.' ") (quoting Filco v. Amana Refrigeration, Inc., 709 F.2d 1257, 1260 (9th Cir.), cert. dismissed, 464 U.S. 956, 104 S.Ct. 385, 78 L.Ed.2d 331 (1983)). Accordingly, Frybarger bears the burden of demonstrating some genuine issue of material fact as to whether a reasonable jury could conclude that Frybarger's and Gebelli's works are substantially similar in ideas and expression. If unable to do so, summary judgment is appropriate.

II. COPYRIGHT INFRINGEMENT

To establish a claim for copyright infringement, plaintiff must show that 1) she owns the copyright in the allegedly copied work; 2) defendant had access to the work; and 3) plaintiff's and defendant's works are substantially similiar. Cooling Sys. and Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 491 (9th Cir.1985) (citing Berkic, 761 F.2d at 1291); Litchfield, 736 F.2d at 1355; Sid & Marty Krofft, 562 F.2d at 1162. To show that two works are substantially similar, plaintiff must demonstrate that the works are substantially similar in both ideas and expression. Cooling Sys., 777 F.2d at 491; Berkic, 761...