March 2021: Copyright & Trademark Litigation Update

The Ninth Circuit’s Unpredictable Approach to Substantial Similarity

Plaintiffs alleging copyright infringement of literary works face an uphill battle.  Courts in the Second and Ninth Circuits—where more than half of all U.S. copyright cases are filed—have ruled for defendant studios and networks in roughly nine out of every ten modern copyright cases involving literary works.  And in recent years, district courts in those circuits have been increasingly willing to dismiss these claims at the pleading stage after finding, without the benefit of discovery or expert opinion, that the works at issue are not substantially similar.  But recent decisions from the Ninth Circuit—dubbed the “Court of Appeals for the Hollywood Circuit” by one former jurist—suggest that trend may be slowing.

Courts in the Ninth Circuit assess substantial similarity first through an “extrinsic test.”  Under the test, courts evaluate similarities of works by examining only the objective, protectable elements of each work.  In cases involving literary works, for example, courts look to articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequences of events.  Because the extrinsic test only examines “protectable” elements, courts filter out and disregard any nonprotectable elements, such as scènes à faire, common tropes, and material in the public domain, before examining whether the remaining elements are substantially similar.  

Over the past decade, the extrinsic test has been the death knell for most copyright cases involving literary works at the pleading stage, even though discovery and expert testimony may bear on whether particular elements should be considered under the extrinsic tests as “protectable” elements.  But in two decisions issued this past July, the Ninth Circuit pushed back on that trend, reversing district court decisions involving “The Shape of Water” and “Pirates of the Caribbean.”

In the “The Shape of Water” case (Zindel v. Fox Searchlight Pictures, Inc., No. 18-56087 (9th Cir. 2020)), the plaintiff alleged Fox Searchlight and Guillermo del Toro infringed his father’s play.  The district court disagreed, dismissing the case because the stories were different despite some “superficial similarities.”  But the Ninth Circuit reversed.  The appeals court held “reasonable minds could differ” about whether the two works were substantially similar, and that other evidence, “including expert testimony,” may bear on the extent and qualitative importance of the similarities.  The court further suggested that expert testimony would illuminate whether any similarities were unprotectable literary tropes or scènes à faire.

In the “Pirates of the Caribbean” case (Arthur Lee Alfred II v. Walt Disney Co., No. 19-55669 (9th Cir. 2020)), the plaintiffs alleged Disney’s film franchise infringed their screenplay about pirates.  In dismissing the claim, the district court compared the two works and held that most of the similarities between them were unprotected generic, pirate-movie tropes.  But the Ninth Circuit reversed, holding that it was too early in the case to know whether such elements are indeed unprotectable.  Once again, the court suggested that expert testimony would aid in determining whether the similarities are qualitatively significant.

The Ninth Circuit’s push back did not last for long, however.  In August, the court issued two more decisions on substantial similarity in cases involving literary works—one involving “Inside Out” and the other involving “Empire.”  Both times, the appeals court affirmed the lower court ruling dismissing the claims at the pleading stage.  

In the “Inside Out” case (Masterson v. Walt Disney Co., No. 19-55650 (9th Cir. 2020)), the plaintiff claimed that Disney’s animated film infringed her copyrights in a movie script and poetry book involving depictions of children’s emotions.  In comparing the works, the district court filtered out unprotectable elements, such as common movie tropes and general themes.  After finding the remaining elements were not substantially similar, the district court dismissed the case.  The Ninth Circuit affirmed.  The appeals court found no error in the dismissal of lawsuit at the pleading stage, noting “determining substantial similarity does not necessarily require expert testimony” and the lower court could rely on its “judicial experience and common sense” to make that assessment.

In the “Empire” case (Astor-White v. Strong, No. 19-55735 (9th Cir. 2020)), the plaintiff claimed the producers and creators of Fox’s television series “Empire” infringed his one-page treatment for a television series about a recording industry mogul and his family.  The district court dismissed the case, finding the treatment had no similarities with “Empire” beyond unprotectable ideas and concepts, material in the public domain, and scènes à faire.  The Ninth Circuit affirmed.  The panel explained that no similarities in protectable literary expression, as opposed to unprotectable ideas and concepts, existed in the two works.

These four opinions—all issued in quick succession over a two-month span—are difficult to square.  In “The Shape of Water” and “Pirates of the Caribbean” cases, the court found that discovery and expert testimony were necessary to identify any unprotectable elements that should be disregarded before comparing the remaining elements under the “extrinsic test.”  By contrast, both the “Inside Out” and “Empire” courts filtered out and disregarded unprotectable elements before conducting a comparison, despite the lack of discovery or expert testimony.

Adding to the uncertainty is that all four opinions are unpublished.  Under the Ninth Circuit’s rules, unpublished decisions are not precedent in unrelated matters.  But the rules do not prohibit litigants from citing them, and it appears unpublished cases still have some influence on how courts rule in later cases.  Indeed, the court in “Inside Out” relied on a string of ten unpublished cases to support the notion that the Ninth Circuit has “affirmed [Rule 12(b)(6)] dismissals repeatedly over the past decade in unpublished [decisions].”  

In contrast to the uncertainty created by recent Ninth Circuit decisions, other circuits have continued to employ a more traditional substantial similarity analysis.  The Second Circuit, which has the second largest copyright case load, applies the “more discerning observer” test.  This test requires substantial similarity between only the elements that provide copyrightability to the allegedly infringed work.  Although the Second Circuit’s “more discerning observer” test shares common elements with the Ninth Circuit’s “extrinsic test,” courts in the Second Circuit appear more willing to find elements unprotectable without the benefit of discovery or expert testimony.

For example, in August, the Second Circuit issued its own substantial similarity decision in a case involving CBS’s television series Star Trek: Discovery (Abdin v. CBS Broadcasting Inc., No. 193160-cv (2d Cir. 2020)).  There, the plaintiff alleged that CBS’s series infringed his unreleased science fiction videogame, including his use of a tardigrade, a microscopic animal that can travel in space, as well as the other plot and mood elements.  In affirming the lower court’s dismissal of the claim based on lack of substantial similarity, the Second Circuit explained that any alleged similarities (e.g., tardigrades, space travel, and alien encounters) were unprotectable ideas, stock elements of science fiction genres, and generalized character traits.  A different result may have been reached had the Ninth Circuit decided the case.

Ultimately, the Ninth Circuit’s recent substantial similarity decisions indicate a results-driven approach to copyright infringement claims involving literary works.  For plaintiffs with confidence in their claims, that may come as welcome news: it at least offers a glimmer of hope to plaintiffs in an area they have traditionally found little success.  But the opposite is likely true for defendants seeking certainty in the resolution of claims against them.  For those defendants, one option to consider is seeking a declaratory judgment of noninfringement in a jurisdiction other than the Ninth Circuit, such as the Second Circuit, where courts have applied a more predictable substantial similarity analysis.