Shaw v. Lindheim

• Decision Date: 23 November 1990
• Docket Number: No. 88-6677,88-6677
• Citation: 919 F.2d 1353,15 USPQ2d 1516
• Parties: Lou SHAW; Eastborne Productions, Inc., Plaintiffs-Appellants, v. Richard LINDHEIM; Michael Sloan; Universal City Studios, Inc.; Columbia Broadcasting Systems; MCA Television, Ltd., Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1353

919 F.2d 1353

Lou SHAW; Eastborne Productions, Inc., Plaintiffs-Appellants, v. Richard LINDHEIM; Michael Sloan; Universal City Studios Inc.; Columbia Broadcasting Systems; MCA Television, Ltd., Defendants-Appellees.

No. 88-6677.

United States Court of Appeals Ninth Circuit.

Argued and Submitted June 5, 1990.

Decided July 17, 1990.

As Amended on Denial of Rehearing and Rehearing En Banc Nov.

23, 1990.

Richard D. Aldrich, Westlake Village, Cal., and Marc J. Poster, Greines, Martin, Stein & Richland, Beverly Hills, Cal., for plaintiffs-appellants.

Louis P. Petrich, Leopold, Petrich & Smith, Los Angeles, Cal., for defendants-appellees.

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

Before ALARCON, BRUNETTI and O'SCANNLAIN, Circuit Judges.

ALARCON, Circuit Judge:

Lou Shaw and Eastbourne Productions, Inc. (Shaw) appeal from a grant of summary judgment in favor of Richard Lindheim, Michael Sloan, and three entertainment corporations (defendants). On appeal, Shaw argues that the district court erred in finding that, as a matter of law, there was no substantial similarity between his script entitled "The Equalizer" and defendants' pilot script for their "Equalizer" television series. Because a reasonable trier of fact could have found that the two works are substantially similar, Shaw argues, the district court erred in dismissing his copyright and Lanham Act claims on summary judgment. We reverse and remand.

STATEMENT OF THE CASE

Lou Shaw is a well-known writer and producer in the entertainment industry in Los Angeles. At one time during the 1976-1977 television season, there were eight network television programs on the air that Shaw had created, written for, or produced. ¹ In February 1978, Shaw entered into an option contract with Richard Lindheim, an executive in the Dramatic Programming Division of NBC Television, that granted NBC the option to develop "The Equalizer," a pilot script created by Shaw, into a television series. Shaw delivered the script to Lindheim on July 27, 1978. Lindheim read Shaw's script. Because NBC declined to produce it, all rights in the script reverted back to Shaw.

Lindheim left NBC in 1979 and began work for Universal Television. In 1981, Lindheim wrote a television series treatment entitled "The Equalizer." Lindheim admits that he copied the title of his treatment from Shaw's script. In 1982, defendant Michael Sloan expanded Lindheim's treatment, and the revised version became the pilot script for defendants' Equalizer series, which was broadcast on CBS beginning in 1985.

On November 19, 1987, Shaw filed an action for copyright infringement and unfair competition, alleging that defendants' pilot script and series were substantially similar to the script he had submitted. On August 8, 1988, defendants moved for summary judgment. On October 28, 1988, the district court found that there was no substantial similarity between the two works as a matter of law and granted summary judgment on Shaw's copyright and Lanham Act claims. Shaw timely appeals.

STANDARD OF REVIEW

We review a grant of summary judgment de novo: Narell v. Freeman, 872 F.2d 907, 909 (9th Cir.1989). "Although summary judgment is not highly favored on questions of substantial similarity in copyright cases, summary judgment is appropriate if the court can conclude, after viewing the evidence and drawing inferences in a manner most favorable to the non-moving party, that no reasonable juror could find substantial similarity of ideas and expression." Id. at 909-10. We have frequently affirmed summary judgment in favor of copyright defendants on the issue of substantial similarity. See Worth v. Selchow & Righter Co., 827 F.2d 569, 571 (9th Cir.1987) (citing cases), cert. denied, 485 U.S. 977, 108 S.Ct. 1271, 99 L.Ed.2d 482 (1988). Where reasonable minds could differ on the issue of substantial similarity, however, summary judgment is improper. Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329-30 (9th Cir.1983) (reversing a grant of summary judgment because reasonable minds could differ as to whether the television series "Battlestar: Galactica" infringed on the motion picture "Star Wars"); Baxter v. MCA, Inc., 812 F.2d 421, 425 (9th Cir.) (same as to the composition "Joy" and the

theme from "E.T."), cert. denied, 484 U.S. 954, 108 S.Ct. 346, 98 L.Ed.2d 372 (1987).

DISCUSSION

I. Copyright Claim

Copyright law protects an author's expression; facts and ideas within a work are not protected. Narell, 872 F.2d at 910. To establish a successful copyright infringement claim, Shaw must show that he owns the copyright and that defendant copied protected elements of the work. Id. Because, in most cases, direct evidence of copying is not available, a plaintiff may establish copying by showing that the infringer had access to the work and that the two works are substantially similar. Id. The defendants conceded Shaw's ownership of the original Equalizer script and their access to the script for purposes of the summary judgment motion. As a result, the only issue before the district court on the copyright claim was whether defendants' version of the Equalizer is substantially similar to Shaw's original script.

Any test for substantial similarity is necessarily imprecise:

"Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about and at times might consist of only its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his 'ideas,' to which, apart from their expression, his property is never extended."

Sid & Marty Krofft Television Prods. Inc. v. McDonald's Corp., 562 F.2d 1157, 1163 (9th Cir.1977) (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931)). It is thus impossible to articulate a definitive demarcation that measures when the similarity between works involves copying of protected expression; decisions must inevitably be ad hoc. Id. at 1164 (citing Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) (L. Hand, J.)); see also Comment, Does Form Follow Function?, 35 UCLA L.Rev. 723 (1988) (discussing the difficulty of demarcating the idea-expression line).

A. The Krofft Framework

The Ninth Circuit employs a two-part test for determining whether one work is substantially similar to another. Narell, 872 F.2d at 912; Olson v. National Broadcasting Co., 855 F.2d 1446, 1448 (9th Cir.1988). Established in Sid & Marty Krofft Television Prods. Inc. v. McDonald's Corp., 562 F.2d 1157, 1164 (9th Cir.1977), the test permits a finding of infringement only if a plaintiff proves both substantial similarity of general ideas under the "extrinsic test" and substantial similarity of the protectable expression of those ideas under the "intrinsic test." Olson, 855 F.2d at 1449; Krofft, 562 F.2d at 1164.

1. Scope of the Krofft Tests

Krofft defined the extrinsic test as a "test for similarity of ideas" under which "analytic dissection and expert testimony are appropriate." 562 F.2d at 1164. The intrinsic test, according to Krofft, should measure "substantial similarity in expressions ... depending on the response of the ordinary reasonable person.... [I]t does not depend on the type of external criteria and analysis which marks the extrinsic test." Id. In decisions under the intrinsic test, "analytic dissection and expert testimony are not appropriate." Id.

Relying on this language, panels applying Krofft to literary works have included a lengthy list of concrete elements under the extrinsic test. Whereas Krofft listed "the type of artwork involved, the materials used, the subject matter, and the setting for the subject" as criteria for consideration under the extrinsic test, id., a series of opinions beginning with the district court opinion in Jason v. Fonda, 526 F.Supp. 774 (C.D.Cal.1981), aff'd and incorporated by reference, 698 F.2d 966 (9th Cir.1982), have listed "plot, themes, dialogue, mood, setting, pace, and sequence" as extrinsic test criteria. 526 F.Supp. at 777; see also Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984) (repeating this list), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985); Berkic v. Crichton, 761 F.2d 1289, 1293 (9th Cir.) (same), cert. denied, 474 U.S. 826, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985); Olson, 855 F.2d at 1450 (same); Narell, 872 F.2d at 912 (adding "characters" to the list and transforming "sequence" into "sequence of events").

Now that it includes virtually every element that may be considered concrete in a literary work, the extrinsic test as applied to books, scripts, plays, and motion pictures can no longer be seen as a test for mere similarity of ideas. Because the criteria incorporated into the extrinsic test encompass all objective manifestations of creativity, the two tests are more sensibly described as objective and subjective analyses of expression, having strayed from Krofft's division between expression and ideas. See Narell, 872 F.2d at 912 (referring to an objective, extrinsic test and a subjective, intrinsic test); Berkic, 761 F.2d at 1292 (same); Litchfield, 736 F.2d at 1356 (same). But see Olson, 855 F.2d at 1448-49 (adhering to Krofft's idea/expression distinction). Indeed, a judicial determination under the intrinsic test is now virtually devoid of analysis, for the intrinsic test has become a mere subjective judgment as to whether two literary works are or are not similar. See Berkic, 761 F.2d at 1294 (reaching a result under the intrinsic test in one paragraph); Olson, 855 F.2d at 1453 (same).

2. The District Court's Application of Krofft

An example of how the absence...