Metcalf v. Bochco

• Decision Date: 12 June 2002
• Docket Number: No. 01-55811.,No. 01-56249.,No. 01-56250.,01-55811.,01-56249.,01-56250.
• Citation: 294 F.3d 1069
• Parties: Jerome C. METCALF, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven BOCHCO, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees. Jerome C. Metcalf, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven Bochco, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees. Jerome C. Metcalf, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven Bochco, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

294 F.3d 1069

Jerome C. METCALF, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven BOCHCO, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees.

Jerome C. Metcalf, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven Bochco, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees.

Jerome C. Metcalf, an individual; Laurie Metcalf, an individual, Plaintiffs-Appellants, v. Steven Bochco, an individual; Bochco Steven Productions, a corporation; CBS Entertainment, Inc., a corporation; CBS Productions, Inc., a corporation; Michael L. Warren, an individual; Nicholas Wootton, an individual; Paris Barclay, an individual, Defendants-Appellees.

No. 01-55811.

No. 01-56249.

No. 01-56250.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted March 13, 2002.

Filed June 12, 2002.

Robert F. Helfing, Sedgwick, Detert, Moran & Arnold, Los Angeles, California, argued for the plaintiffs-appellants.

Edward A. Ruttenberg, Leopold, Petrich & Smith, P.C., Los Angeles, California, argued for the defendants-appellees. Robert S. Gutierrez, Leopold, Petrich & Smith, P.C., and Thomas M. Norminton, Norminton & Wiita, Beverly Hills, California, assisted on the brief.

Appeal from the United States District Court for the Central District of California; Robert J. Kelleher, Senior District Judge, Presiding. D.C. No. CV-00-04550-RJK.

Before KOZINSKI and GOULD, Circuit Judges, and BREYER, District Judge.^*

OPINION

KOZINSKI, Circuit Judge:

We delve once again into the turbid waters of the "extrinsic test" for substantial similarity under the Copyright Act.

Facts¹

In November 1989, Jerome Metcalf read two newspaper articles about the Army's practice of training surgeons at inner-city hospitals to expose them to combat-like conditions. Based on these articles, Jerome and his wife Laurie ("the Metcalfs") conceived a story about a county hospital in inner-city Los Angeles and the struggles of its predominantly black staff. Along with third party Joan Ray, the Metcalfs formed a corporation ("CCA") to develop the idea into a full-length motion picture. Jerome then discussed the idea with defendant Michael Warren, a friend and actor who had starred in television shows produced by defendant Steven Bochco, including "Hill Street Blues." Warren liked the idea and encouraged Jerome to write a project summary or "treatment," with the promise that he would present it to Bochco.

CCA commissioned a writer to prepare a treatment based on the Metcalfs' idea. Unhappy with the result, the Metcalfs wrote their own treatment, titled it "Give Something Back," and gave it to Warren. Warren said he liked it and relayed it to Bochco. Warren later told Jerome that Bochco also liked the treatment, but declined to use it because he was busy with other projects.

CCA then hired another author to write a screenplay based on the treatment. Warren also reviewed this work, titled "As Long As They Kill Themselves," and submitted it to Bochco. Near the end of 1991, Warren again told Jerome that Bochco lacked the time to develop the Metcalfs' idea.

Undaunted, the Metcalfs revised the screenplay and retitled it "About Face." In 1992, they pitched the work to Bochco (again via Warren) and defendant CBS, but neither avenue proved fruitful. CBS explained that it had another hospital series in development at the time.

Much to the Metcalfs' surprise, on January 16, 2000, the television series "City of Angels" premiered on CBS. The pilot and first episode were produced and written by Bochco, starred Warren, and featured a county-run, inner-city hospital in Los Angeles with a predominantly black staff.

The Metcalfs filed suit in state court against Bochco, Bochco Steven Enterprises, CBS Entertainment, CBS Productions, Michael Warren, Nicholas Wootton and Paris Barclay² (collectively, "Bochco"), alleging various claims based upon theft of literary property. Bochco removed the action to federal court. The Metcalfs filed an amended complaint that added a claim of copyright infringement. Bochco successfully moved to dismiss the Metcalfs' state-law claims, then moved for summary judgment on the remaining copyright claim. Bochco argued that the Metcalfs could not prove ownership of the allegedly copied works because the works were owned by CCA, and that the "City of Angels" series was not substantially similar to those works.

The district court held that the Metcalfs owned valid copyrights in "Give Something Back," "As Long As They Kill Themselves," and "About Face," and that the evidence was sufficient to establish that Bochco had access to these works. However, the court granted Bochco's summary judgment motion on the ground that the Metcalf and Bochco works were not substantially similar. The district court also awarded Bochco $83,316.81 in attorneys' fees. The Metcalfs appeal.

Discussion

To prevail on their infringement claim, the Metcalfs must show that they own the works in question and that Bochco copied them. Shaw v. Lindheim, 919 F.2d 1353, 1356 (9th Cir.1990). Copying may be established by showing that the Metcalf and Bochco works are substantially similar in their protected elements and that Bochco had access to the works. Id.

1. The Metcalfs, and not CCA, own the treatment "Give Something Back" and those portions of the screenplay "About Face" that the Metcalfs wrote. These are not "work[s] made for hire" for CCA. 17 U.S.C. § 201(b). In the absence of a written agreement, to determine whether the writer of a work is an employee who does not own the work, or instead an independent contractor who does, we apply "principles of general common law of agency." Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 734, 751, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989). Under these principles, the Metcalfs were independent contractors who retained the rights to "Give Something Back" and the Metcalf-authored portions of "About Face." They were not on payroll and did not receive benefits. See id. at 753, 109 S.Ct. 2166. Screenplay production was not "regular business" for CCA, id.; rather, CCA was formed specifically to develop the Metcalfs' idea. The Metcalfs used their own tools to write, and had discretion over "when and how long to work." Id. at 752-53, 109 S.Ct. 2166.

The Metcalfs, however, do not own the screenplay "As Long As They Kill Themselves" or those portions of "About Face" that they did not write. These are "work[s] made for hire," 17 U.S.C. § 201(b), and are thus owned by CCA. According to the written contract between CCA and the writer of "As Long As They Kill Themselves," the screenplay is a "work made for hire" for CCA, which "is and shall be considered the author of said Material for all purposes and the sole and exclusive owner of all of the rights comprised in the copyright."³

2. We employ a two-part analysis—an extrinsic test and an intrinsic test—to determine whether two works are substantially similar. Shaw, 919 F.2d at 1356. However, on summary judgment, "only the extrinsic test is relevant," because a plaintiff avoids summary judgment by satisfying it. Smith v. Jackson, 84 F.3d 1213, 1218 (9th Cir.1996).

The extrinsic test is an objective one that focuses on "articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events." Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994) (citation and internal quotation marks omitted). Even without considering "As Long As They Kill Themselves," we conclude that the Metcalfs satisfied this test and raised a genuine issue of triable fact on the question of substantial similarity.

The similarities between the relevant works are striking: Both the Metcalf and Bochco works are set in overburdened county hospitals in inner-city Los Angeles with mostly black staffs. Both deal with issues of poverty, race relations and urban blight. The works' main characters are both young, good-looking, muscular black surgeons who grew up in the neighborhood where the hospital is located. Both surgeons struggle to choose between the financial benefits of private practice and the emotional rewards of working in the inner city. Both are romantically involved with young professional women when they arrive at the hospital, but develop strong attractions to hospital administrators. Both new relationships flourish and culminate in a kiss, but are later strained when the administrator observes a display of physical intimacy between the main character and his original love interest. Both administrators are in their thirties, were once married but are now single, without children and devoted to their careers and to the hospital. In both works, the hospital's bid for reaccreditation is vehemently opposed by a Hispanic politician. "[T]he totality of the similarities ... goes beyond the necessities of the ... theme and belies any claim of literary accident." Shaw, 919 F.2d at 1363. The cumulative weight of these similarities allows the Metcalfs to survive summary judgment.

Bochco correctly argues that copyright law protects a writer's expression of ideas, but not the ideas themselves. Kouf, 16 F.3d at 1045. "General plot ideas are not protected by copyright law; they remain forever the common property of artistic mankind." Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir.1985). Nor does copyright law protect "scenes a faire," or scenes that flow naturally from unprotectable basic plot premises. Id.; See v. Durang, 711 F.2d 141, 143 (9th Cir.1983). Instead, protectable expression includes the specific details...