Warner Bros., Inc. v. Am. Broadcasting Companies

• Decision Date: 18 March 1981
• Docket Number: No. 81 Civ. 1551 (CBM).,81 Civ. 1551 (CBM).
• Citation: 523 F. Supp. 611
• Parties: WARNER BROS., INC., Film Export A.G., and DC Comics, Inc., Plaintiffs, v. AMERICAN BROADCASTING COMPANIES, INC., Defendant. AMERICAN BROADCASTING COMPANIES, INC., Defendant and Third-Party Plaintiff, v. STEPHEN J. CANNELL PRODUCTIONS, INC., Third-Party Defendant.
• Court: U.S. District Court — Southern District of New York

523 F. Supp. 611

WARNER BROS., INC., Film Export A.G., and DC Comics, Inc., Plaintiffs, v. AMERICAN BROADCASTING COMPANIES, INC., Defendant.

AMERICAN BROADCASTING COMPANIES, INC., Defendant and Third-Party Plaintiff, v. STEPHEN J. CANNELL PRODUCTIONS, INC., Third-Party Defendant.

No. 81 Civ. 1551 (CBM).

United States District Court, S. D. New York.

March 18, 1981.

COPYRIGHT MATERIAL OMITTED

Weiss, Dawid, Fross, Zelnick & Lehrman by Allan Zelnick, New York City, for plaintiffs.

Hawkins, Delafield & Wood by Philip R. Forlenza, New York City, for defendant and third-party plaintiff.

Townley & Updike by Richard J. Barnes and Neil J. Rosini, New York City, for third-party defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

MOTLEY, District Judge.

Plaintiffs, Warner Bros., Inc., Film Export A.G. and DC Comics, Inc., the owners of all rights in the cartoon character Superman and all works embodying him, brought this action against American Broadcasting Companies, Inc. (ABC) for copyright infringement under 17 U.S.C. §§ 101 et seq., for false designation under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for unfair competition under § 368-d of the New York General Business Law. Stephen V. Cannell Productions was brought into the action as a third party defendant. Plaintiffs moved two days ago, March 16, 1981, for a temporary restraining order and preliminary injunction enjoining the defendant: 1) from continuing to broadcast certain promotional television spots relating to its forthcoming made-for-television motion picture "The Greatest American Hero;" 2) from broadcasting the motion picture now scheduled for nationwide broadcast on the evening of Wednesday, March 18, 1981; and 3) from broadcasting any episodes of a television series based on "The Greatest American Hero" prior to affording plaintiffs opportunity to examine the shows and to seek appropriate relief. The court held a hearing on plaintiffs' motion on March 16 and 17 which included viewing a portion of a Superman television show, the entire movie entitled "Superman, The Movie", television spots which ABC has aired to promote "The Greatest American Hero," and "The Greatest American Hero." The court also heard testimony of witnesses and received exhibits and affidavits from both parties. For the reasons discussed below, the court denies plaintiffs' motion for a preliminary injunction.

FACTS

Plaintiff Warner Bros., Inc. is the exclusive United States distributor of the motion picture "Superman, The Movie" and of the forthcoming sequel "Superman II," all rights in which are owned by plaintiff Film Export A.G. Plaintiff DC Comics, Inc. is the owner of all rights in the cartoon character Superman and in works depicting that character and his adventures. The motion pictures "Superman, The Movie" and "Superman II" were made by the plaintiff Film Export A.G. under license from DC Comics, Inc. Pursuant to that license, Film Export also has the right to veto any new Superman television programs or series while its films are in release.

Defendant, ABC, is a national television network with affiliated stations throughout the United States. Steven V. Cannell Productions, the Third Party Defendant, is a producer of television programs with an exclusive contract with ABC. Steven V. Cannell wrote and produced the made-for-television movie "The Greatest American Hero" for broadcast by ABC on March 18, 1981.

In the forty years since his creation by the predecessors of DC Comics, Superman has become a "folk hero" to the American public, both in cartoon form and portrayed by live actors. There is no need for this court to give a detailed description of this caped, flying character with superhuman powers, who when not fighting for "truth, justice and the American way," masquerades as the "mild mannered reporter," Clark Kent. Superman's ability to fly "faster than a speeding bullet" and "leap tall buildings in a single bound" is well known to all Americans.

"The Greatest American Hero" is a new made-for-television movie that, if successful, will be the first show in a series in ABC's fall programming schedule. Excerpts from this premiere program and other film clips have been telecast by ABC for promotional purposes during the last two weeks. The leading character of "The Greatest American Hero" is Ralph Hinkley. He is an urban California high school teacher plagued both personally and professionally with the problems now indigenous to the average American John Doe of the 1980's. While walking through a semi-desert area at night to find gasoline for his suddenly stalled school bus, he is inexplicably chosen by unidentified aliens from a spaceship to receive a leotard type red suit and black cape which, when worn, endow him with superhuman powers. Unfortunately, Hinkley loses the instructions on how to use these powers and he bungles nearly every attempt to exercise his new abilities. The plot of the program follows Hinkley's mission, accompanied by an FBI agent and his girl friend, to stop a villain from taking over the city of Los Angeles.

DISCUSSION

The standard for granting a preliminary injunction is well-settled in this Circuit. The party seeking this relief must show both irreparable injury and either 1) a likelihood of success on the merits or 2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in its favor. Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979). Upon the showing of a prima facie case of copyright infringement, a copyright holder is entitled to a preliminary injunction without a detailed showing of irreparable harm. American Metropolitan Enterprises of New York, Inc. v. Warner Bros. Records, Inc., 389 F.2d 903, 905 (2d Cir. 1968). This court need not consider whether plaintiffs will suffer irreparable injury, however, since it finds that plaintiffs have failed to meet their burden of showing likelihood of success on the merits or a balance of hardships tipping decidedly in their favor.

1. The Merits

a) Copyright Infringement

Plaintiffs claim that "The Greatest American Hero" infringes their copyright in the Superman character by appropriating precisely those attributes that are unique to Superman. Plaintiffs point to Superman's unique take-off preliminary to flying, his singular flying technique, his powers of "X-ray vision", long distance hearing, superhuman strength and ability to resist bullets which Ralph Hinkley acquires when he dons the magic suit, as well as certain action details such as the manner in which Hinkley transforms himself from human to superhuman by putting on the suit.

In addition, plaintiffs say their copyrights are infringed by certain references made to well-known phrases found in the Superman adventures, such as: "It's a bird, it's a plane" and "faster than a speeding bullet, more powerful than a locomotive."

In order to prevail on its claim for copyright infringement a plaintiff must prove 1) ownership of the copyrighted work; 2) access thereto by defendants; and 3) a substantial similarity to the copyrighted work. Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905, 911 (2d Cir. 1980). The only dispute between the parties in this case is whether "The Greatest American Hero" bears a substantial similarity to the Superman character and story.

The Second Circuit's formulations of the test for determining substantial similarity were set forth in Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092-93 (2d Cir. 1977) and recently quoted in Durham Industries, Inc. v. Tomy Corp., supra, 630 F.2d at 911-912:

"`Substantial similarity' is to be determined by the `ordinary observer' test. Judge Learned Hand in defining this test stated there is substantial similarity where `the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.' Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960). More recently this court formulated the test as `whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.' Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966)."

After comparing Ralph Hinkley and Superman, the court concludes that plaintiffs have not satisfied this test.

Plaintiffs' copyrights do not entitle them to protection of the idea of a character with superhuman powers who battles the forces of evil. "It is an axiom of copyright law that the protection granted to a copyrightable work extends only to the particular expression of an idea and never to the idea itself." Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976). The Court of Appeals recognized in the early days of the Superman comic strip that the owners of Superman were "not entitled to a monopoly of the mere character of a `Superman' who is a blessing to mankind." Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432, 434 (2d Cir. 1940). Plaintiffs may not claim a protected interest in the theme of a man dressed in cape and tights who has the power to fly, resist bullets, crash through walls and break handcuffs with his bare hands. Rather, to warrant an injunction, plaintiffs must show that the concrete expression of the Superman idea has been appropriated in defendants' program.

While the idea/expression distinction is crucial "in delineating the scope of protection to be afforded a copyrighted work, it is a `difficult task ... to distill the nonprotected idea from the protected expression.'" Durham Industries, Inc. v. Tomy Corp., supra, 630 F.2d at 912, quoting Reyer v. Children's Television Workshop, supra, 533 F.2d at 91. Such determinations must inevitably be ad hoc and often a matter of degree. Id. There are several attributes and actions of...