Benay v. Warner Bros. Ent. Inc

• Citation: 607 F.3d 620
• Decision Date: 09 June 2010
• Docket Number: No. 08-55719.,08-55719.
• Parties: Aaron BENAY; Matthew Benay, individually, Plaintiffs-Appellants,v.WARNER BROS. ENTERTAINMENT, INC., a Delaware corporation; Radar Pictures, Inc., a California corporation; Bedford Falls Productions, Inc., a California corporation; Edward Zwick, an individual; Marshall Herskovitz, an individual; John Logan, an individual, Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

607 F.3d 620

Aaron BENAY; Matthew Benay, individually, Plaintiffs-Appellants,v.WARNER BROS. ENTERTAINMENT, INC., a Delaware corporation; Radar Pictures, Inc., a California corporation; Bedford Falls Productions, Inc., a California corporation; Edward Zwick, an individual; Marshall Herskovitz, an individual; John Logan, an individual, Defendants-Appellees.

No. 08-55719.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Oct. 8, 2009.

Filed June 9, 2010.

COPYRIGHT MATERIAL OMITTED

Sylvia Havens, Los Angeles, CA, for the appellants.

George R. Hedges, Gary E. Gans, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Los Angeles, CA, Jaime Wayne Marquart, Daryl Marc Crone, Baker Marquart Crone & Hawxhurst, LLP, Los Angeles, CA, for the appellees.

David Aronoff, Lathrop & Gage LLP, Los Angeles, CA, for appellee Radar Pictures, Inc.

Appeal from the United States District Court for the Central District of California, Philip S. Gutierrez, District Judge, Presiding. D.C. No. 2:05-cv-08508-PSG-FMO.

Before: W. FLETCHER and RICHARD R. CLIFTON, Circuit Judges, and JAMES K. SINGLETON,^* Senior District Judge.

WILLIAM A. FLETCHER, Circuit Judge:

Plaintiffs are two brothers, Aaron and Matthew Benay, who wrote and copyrighted a screenplay The Last Samurai (“the Screenplay”). The Benays contend that the creators of the film The Last Samurai (“the Film”) copied from the Screenplay without permission. They sued Warner Brothers Entertainment, Inc., Radar Pictures, Inc., Bedford Falls Productions, Inc., Edward Zwick, Marshall Herskovitz, and John Logan (collectively “Defendants”), who wrote, produced, marketed, and/or distributed the Film. Inter alia, the Benays alleged copyright infringement under federal law and breach of contract under California law.

The district court granted summary judgment to Defendants on the copyright and breach of contract claims. We affirm on the copyright claim. We reverse and remand on the breach of contract claim.

I. Background

The Benays wrote their Screenplay between 1997 and 1999. They registered it with the Writers Guild of America in 1999 and with the federal copyright office on February 23, 2001. The Benays' agent, David Phillips, “pitched” the Screenplay to the president of production at Bedford Falls, Richard Solomon, on the telephone sometime between May 9, 2000, and May 12, 2000. Phillips provided a copy of the Screenplay to Solomon on May 16, 2000. According to Phillips, he provided the Screenplay with the implicit understanding that if Bedford Falls used it to produce a film, the Benays would be appropriately compensated. Solomon informed Phillips after receiving the Screenplay that Bedford Falls had decided to “pass” because it already had a similar project in development.

The Benays point to circumstantial evidence that, in their view, indicates that important aspects of the Film were copied from the Screenplay. Defendants contend that the Film was developed independently of the Screenplay. The Screenplay and the Film are similar in some respects and dissimilar in others.

The protagonist in the Screenplay is James Gamble, a successful West Point professor with a beautiful wife and a five-year-old son. Gamble travels to Japan at the request of President Grant. Gamble owes a debt to the President because then-General Grant saved Gamble's career after he accidentally killed eight of his own men during the Civil War. Gamble is initially successful in training and leading the Japanese Imperial Army, which is victorious in its first battle against the samurai. However, that battle turns out to be a strategic blunder because it incites a full samurai rebellion led by a treacherous samurai named Saigo. Gamble's five-year-old son is killed during Saigo's attack on a Christian church service. The death of his son leads Gamble to launch an attack against Saigo, which results in a devastating loss for the Imperial Army. Gamble falls into an opium-aided stupor, in which he is haunted by his failure, his mistake during the Civil War, and the death of his son. Gamble eventually is pulled out of this crisis by his wife and by Masako, a female samurai warrior who has double-crossed Saigo. The remainder of the Screenplay consists of Gamble's campaign to exact revenge. A series of battles unfolds between the Imperial Army, led by Gamble, and the samurai rebels. The conflict eventually ends with Gamble killing Saigo in a sword fight with the help of Masako, who dies in the fight. Gamble returns to the United States, where he lives in a Japanese-style house with his wife and a newborn child named Masako.

The protagonist in the Film is Nathan Algren, an unmarried alcoholic. He is haunted by his role in an attack on an innocent tribe during the Indian Campaigns. He has just been fired from his dead-end job hawking Winchester rifles when he is recruited by his former commander to train the Japanese Imperial Army in modern warfare. He travels to Japan as a mercenary. After Algren is captured by the samurai at the end of a disastrous first battle, he is exposed to traditional samurai culture. Algren bonds with Katsumoto, the honorable leader of the samurai rebellion, and falls in love with Taka, the widow of a samurai Algren killed while fighting for the Imperial Army. Algren assimilates into a samurai village, eventually joining the samurai in a final futile battle against the modernized Imperial Army. After the samurai army is devastated, Algren confronts the young Emperor and teaches him the value of traditional samurai culture before returning to live with Taka in the samurai village.

The Benays filed suit on December 5, 2005, exactly two years after the public release of the Film. They asserted claims of copyright infringement under federal law, and breach of contract, breach of confidence, and intentional interference with prospective economic advantage under California law. Only the copyright and breach of contract claims survived to the summary judgment stage. The district court granted summary judgment to Defendants on both claims.

The Benays timely appealed the grant of summary judgment.

II. Standard of Review

We review de novo the district court's grant of summary judgment, viewing the evidence in the light most favorable to the non-moving party to determine the presence of any issues of material fact. See Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1044 (9th Cir.1994).

III. Discussion

A. Copyright Claim

To prevail on their copyright infringement claim, the Benays “must demonstrate ‘(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.’ ” Funky Films, Inc. v. Time Warner Entm't Co., 462 F.3d 1072, 1076 (9th Cir.2006) (quoting Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). Defendants do not deny that the Benays own a valid copyright, but they deny having copied from the Screenplay. The issue before us on appeal is whether there is substantial similarity between protected elements of the Screenplay and comparable elements of the Film. See id. (“Absent evidence of direct copying, proof of infringement involves fact-based showings that the defendant had access to the plaintiff's work and that the two works are substantially similar.” (quotation omitted)).

“ ‘When the issue is whether two works are substantially similar, summary judgment is appropriate if no reasonable juror could find substantial similarity of ideas and expression.’ ” Id. (quoting Kouf, 16 F.3d at 1045). Substantial similarity is a fact-specific inquiry, but it “ ‘may often be decided as a matter of law.’ ” Id. (quoting Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp. (“ Krofft ”), 562 F.2d 1157, 1164 (9th Cir.1977)). “Indeed, ‘[w]e have frequently affirmed summary judgment in favor of copyright defendants on the issue of substantial similarity.’ ” Id. at 1077 (quoting Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir.1990)).

“The Ninth Circuit employs a two-part test for determining whether one work is substantially similar to another.” Shaw, 919 F.2d at 1356. To prevail in their infringement case, the Benays must “prove[ ] both substantial similarity ... under the ‘extrinsic test’ and substantial similarity ... under the ‘intrinsic test.’ ” Id. (emphasis in original). “The ‘extrinsic test’ is an objective comparison of specific expressive elements.” Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th Cir.2002). “The ‘intrinsic test’ is a subjective comparison that focuses on ‘whether the ordinary, reasonable audience’ would find the works substantially similar in the ‘total concept and feel of the works.’ ” Id. (quoting Kouf, 16 F.3d at 1045). On a motion for summary judgment, we apply only the extrinsic test. The intrinsic test is left to the trier of fact. See Swirsky v. Carey, 376 F.3d 841, 844-45 (9th Cir.2004); Funky Films, 462 F.3d at 1077. If the Benays fail to satisfy the extrinsic test, they cannot survive a motion for summary judgment. See Olson v. Nat'l Broad. Co., 855 F.2d 1446, 1448-49 (9th Cir.1988).

“The extrinsic test is an objective test based on specific expressive elements: the test focuses on articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in two works.” Kouf, 16 F.3d at 1045 (quotation omitted). “A court must take care to inquire only whether the protect[able] elements, standing alone, are substantially similar.” Cavalier, 297 F.3d at 822 (emphasis and quotation omitted). “Copyright law only protects expression of ideas, not the ideas themselves.” Id. at 823. “Familiar stock scenes and themes that are staples of literature are not protected.” Id. “Scenes-a-faire, or situations and incidents that flow necessarily or naturally from a basic plot premise, cannot sustain a finding of infringement.” Id. Historical facts are also unprotected by copyright law. Narell v. Freeman, 872 F.2d 907, 910-11 (9th Cir....