Dubay v. King
| Decision Date | 28 February 2019 |
| Docket Number | Case No. 3:17-cv-00348-J-20MCR |
| Citation | 366 F.Supp.3d 1330 |
| Parties | Benjamin Michael DUBAY, Plaintiff, v. Stephen KING; Media Rights Capital; Imagine Entertainment; Sony Pictures Entertainment; Marvel Entertainment; Simon & Schuster, Defendants. |
| Court | U.S. District Court — Middle District of Florida |
Robby Thomas Cook, Rob Cook Attorney at Law, PA, St. Augustine, FL, Robert Richard Fredeking, Fredeking Law, PLLC, Jacksonville, FL, for Plaintiff.
Louis Peter Petrich, Pro Hac Vice, Vincent Cox, Pro Hac Vice, Leopold, Petrich & Smith, P.C., Los Angeles, CA, Raymond F. Treadwell, Shutts & Bowen, LLP, Orlando, FL, Sanford Lewis Bohrer, Scott D. Ponce, Holland & Knight, LLP, Miami, FL, Michael Manuel Gropper, Holland & Knight, LLP, Jacksonville, FL, for Defendant.
THIS CAUSE is before the Court on Defendants' Dispositive Motion for Summary Judgment and Memorandum of Law in Support (Doc. 115) and Plaintiff's Response and Memorandum of Law in Opposition thereto (Doc. 120). After careful consideration of the issues presented, Defendants' Motion for Summary Judgment (Doc. 115) is granted. The Court's analysis in support of that conclusion is as follows:
I. Background
Benjamin Michael DuBay ("Plaintiff") is a nephew of William Bryan DuBay, one of the creators of "Restin Dane" also known as "The Rook." The Rook is a comic book character whose first story was published in 1977 in a Warren Publications horror/fantasy comic magazine entitled Eerie volume 82 (hereinafter "Eerie 82 "). According to Plaintiff, The Rook character was distributed in "greater than five million comic magazine copies, throughout the United States from January 1977 thru March 1983" (Doc. 6, ¶ 18). The Rook comic remains available to the public today in comic books, graphic novels and electronic forms (Doc. 6, ¶ 20).
Defendant Stephen King is the author of the widely successful series of novels entitled The Dark Tower . First published in 1982, The Dark Tower has evolved into an eight-volume series, reimagined and interpreted through various mediums, including film and graphic novels. Roland Deschain also known as "The Gunslinger," is the protagonist of the series.
Approximately 35 years after the world first officially1 met Roland Deschain, Plaintiff brought this action alleging that Roland Deschain is so shockingly and extraordinarily similar to The Rook that Defendant King must have unlawfully copied and appropriated The Rook character. (Doc. 6, ¶¶ 1, 24).2 Plaintiff has identified the infringing works as: the eight novels of The Dark Tower series written by Defendant King and published by Defendant Simon & Schuster; 16 of The Dark Tower graphic novels licensed by Defendant Marvel; and the 2017 feature film The Dark Tower produced and/or distributed by Defendants MRC,3 Imagine Entertainment and Sony Pictures Entertainment. Plaintiff argues that because Roland is the central character in this large volume of works, all works infringe on Plaintiff's validly held copyright of The Rook character.
On March 28, 2017, Plaintiff filed a two-count complaint against Defendant King alleging claims for Copyright Infringement and Vicarious Copyright Infringement . Shortly thereafter, Plaintiff filed an amended complaint naming the remaining Defendants and adding an additional count for Contributory Copyright Infringement against Defendants MRC and Imagine Entertainment .
II. The Relevant Copyright
Plaintiff claims he is the owner of the copyright for the work entitled "The Rook," registered with the United States Copyright Office under Registration Number B188968. The registration date is February 4, 1977. The initial publication date is January 19, 1977. The deposit copy for No. B188968 is Eerie 82 . (Doc. 6, ¶ 21). It is by and through this copyright for Eerie 82 that Plaintiff claims ownership of the copyright the Defendants are accused of infringing. For the purposes of this analysis, the Court will treat Plaintiff as the owner of the relevant copyright for The Rook character.4
III. Summary Judgment Standard
Summary Judgment is proper if "there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). The party moving for summary judgment bears the initial burden of showing the Court there is an absence of a genuine issue of material fact to be decided at trial. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). A party seeking summary judgment has the initial responsibility of "identifying those portions of ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any’ which it believes demonstrate the absence of a genuine issue of material fact." Id. at 323, 106 S.Ct. 2548 (quoting Fed. R. Civ. P. 56(e) ). Once the moving party has met its burden, the non-moving party must present specific facts showing there is a genuine issue of fact for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (citing Fed. R. Civ. P. 56(e) ).
An issue of fact is "genuine" if the record could lead a trier of fact to find for the non-moving party. Allen v. Tyson Foods , 121 F.3d 642, 646 (11th Cir. 1997). A "material" fact is one that "might affect the outcome of the suit under governing law." Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
When reviewing a summary judgment motion, " ‘The district court should resolve all reasonable doubts about the facts in favor of the non-movant and draw all justifiable inferences ... in his favor.’ " Hickson Corp. v. Northern Crossarm Co., Inc. , 357 F.3d 1256 (11th Cir. 2004) (quoting United States v. Four Parcels of Real Prop. , 941 F.2d 1428, 1437-38 (11th Cir. 1991) ) In so doing, a Court cannot weigh conflicting evidence or determine issues of credibility. FindWhat Inv'r Grp. v. FindWhat.com , 658 F.3d 1282, 1307 (11th Cir. 2011). Instead, the Court is " ‘limited to deciding whether there is sufficient evidence upon which a [fact-finder] could find for the non-moving party.’ " Georgia State Conference of NAACP v. Fayette Cty. Bd. of Com'rs , 775 F.3d 1336 (11th Cir. 2015) (quoting Morrison v. Amway Corp. , 323 F.3d 920, 924 (11th Cir. 2003) ).
IV. Infringement Analysis
Despite what many may think, "Not all copying ... is copyright infringement." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc. , 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). To make out a prima facie case for infringement of a copyright, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Id. ; Peter Letterese and Assoc, Inc., v. World Inst. of Scientology Enter. , 533 F.3d 1287, 1300 (11th Cir. 2008). Because evidence of direct copying is rare, courts have "developed methods by which copying can be found indirectly." Beal v. Paramount Pictures Corp. , 20 F.3d 454, 459 (11th Cir. 1994). Absent direct evidence of copying, a plaintiff must demonstrate (1) the defendants had access to the copyrighted work and (2) the works are substantially similar to the protected expression. Id. (citing Original Appalachian Artworks, Inc. v. Toy Loft, Inc. , 684 F.2d 821, 829 & n.11 (11th Cir. 1982) ). Plaintiff must show both access and substantial similarity to prove copying. Id. at 460.5
Some courts have found summary judgment to be inappropriate in a copyright infringement lawsuit because of the "inherently subjective nature of the inquiry." Oravec v. Sunny Isles Luxury Ventures, L.C. , 527 F.3d 1218, 1223 (11th Cir. 2008) (citing Beal , 20 F.3d at 459 (11th Cir. 1994) ). Nevertheless, non-infringement has been found as a matter of law and summary judgment granted where, either , "the similarity between two works concerns only non-copyrightable elements of the plaintiff's work, or because no reasonable jury, properly instructed, could find the works are substantially similar." Herzog v. Castle Rock Entm't. , 193 F.3d 1241, 1247 (11th Cir. 1999) (per curiam) ()(citations omitted)(emphasis added); Oravec , 527 F.3d at 1223 (same); Beal , 20 F.3d at 459 (same).6 This analysis is sometimes called a two-pronged test: (1) an extrinsic, objective test, and (2) an intrinsic, subjective test. See Herzog, 193 F.3d at 1257 (citing Beal v. Paramount Pictures , 806 F.Supp. 963, 967 (N.D. Ga., 1992) ), aff'd, Beal , 20 F.3d 454 ; Lil' Joe Wein Music, Inc. v. Jackson , 245 Fed. App'x. 873, 877 (11th Cir. 2007).
Under the extrinsic test, a court will inquire into whether, as an objective matter, the protected expression of the works are substantially similar. Id. If, under the extrinsic test, the plaintiff "seeks to protect only uncopyrightable elements" the court will grant summary judgment for the defendant. Id. Pursuant to the intrinsic test, the Court will consider whether a reasonable jury, properly instructed, would find the works substantially similar. If a plaintiff cannot meet either prong, a court may grant summary judgment. Herzog , 193 F.3d at 1257.
Just because a work holds a copyright does not mean that that copyright protection extends to every element of that work. Copyright protection extends to that which is original to the author. Feist , 499 U.S. at 348, 111 S.Ct. 1282. "Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression ...." 17 U.S.C. § 102(a). Thus "[t]he sine qua non of copyright is originality." Beal , 20 F.3d at 459 (quoting Feist , 499 U.S. at 345, 111 S.Ct. 1282 ). Original in this context means that the work was independently created by the author and possesses a...
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COPYRIGHT AND THE BRAIN.
...Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1167 (9th Cir. 1977) ("total concept and feel"); DuBay v. King, 366 F. Supp. 3d 1330, 1348 (M.D. Fla. (130.) Tushnet, supra note 3, at 736. (131.) Atari, Inc. v. N. Am. Philips Consumer Elecs. Corp., 672 F.2d 607, 618 (7th C......