Copyright Law | Expert Legal Commentary

September 8, 2010

Benay v. Warner Bros.: Upholding Contract Rights for Artistic Works Even Without Copyright Protection

Benay v. Warner Bros. Entertainment, Inc.

By Tom Zuber and Ryan Smith of Zuber Lawler & Del Duca

Benay v. Warner Bros.: Upholding Contract Rights for Artistic Works Even Without Copyright Protection

The U.S. Court of Appeals for the Ninth Circuit has affirmed that contractual protections for artistic works may be enforceable even in the absence of valid federal copyright protection for those works. In Benay v. Warner Bros. Entertainment, Inc., 607 F.3d 620 (9th Cir. 2010), the Ninth Circuit applied the extrinsic test to determine that the plaintiff’s screenplay, “The Last Samurai” was not substantially similar to the defendant’s movie by the same name to support a federal copyright infringement claim. However, the court applies a different analysis of “substantial similarity” in breach of contract actions, and under that standard, the plaintiff’s claims had merit, affording plaintiffs contractual protection for their screenplay.


Brothers Aaron and Matthew Benay wrote and copyrighted a screenplay entitled “The Last Samurai.” The Benays’ agent pitched their screenplay to the president of production at Bedford Falls Productions Inc. in 2000, providing him with a copy of the screenplay with the understanding that if Bedford Falls used it to produce a film, it would compensate the Benays. Bedford Falls told the agent, however, that it was passing on the screenplay because it already had a similar project in development.

Seven years later, defendants publicly released the film, “The Last Samurai,” which the defendants wrote, produced, marketed, and distributed.

The Benays brought suit in the Central District of California, asserting claims for copyright infringement under federal copyright law and breach of contract under California state law. The district court granted summary judgment in favor of defendants on both counts and plaintiffs appealed.

Plaintiffs could not sustain a copyright infringement claim under the extrinsic test

In order to prevail on a copyright infringement claim, a plaintiff must show: 1) ownership of a valid copyright and 2) that defendant copied constituent, original elements of plaintiff’s copyrighted work. Benay v. Warner Bros. Entertainment, Inc., 607 F.3d 620, 624 (9th Cir. 2010). Without direct evidence of copying, a plaintiff can prove infringement through fact-based showings that defendant had access to the plaintiff’s work and that the two works are substantially similar. Id.

In order to prove substantial similarity, a plaintiff must meet two tests – the intrinsic test and the extrinsic test. Id. The intrinsic test, a subjective comparison that considers “’whether the ordinary, reasonable audience’ would find the works substantially similar in the ‘total concept and feel of the works,’” is a question reserved for the ultimate trier of fact. Id. (citing Cavalier v. Random House, 297 F.3d 815, 822 (9th Cir. 2002)). The extrinsic test is an objective comparison of the copyrightable elements of a work – the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events. Id. The Ninth Circuit noted that general plot ideas, historical facts, stock themes, and other publicly available elements are not protected by copyright law. Id. at 624-625.

In applying the Benays’ screenplay to the defendants’ film, the Ninth Circuit found similarities in the premise, theme, title, and historical facts, and other unprotected elements of the two works. However, it found more differences than similarities in the protectable elements of the two works as to prevent a finding of “substantial similarity” under copyright law. Id. at 625. In agreeing with the district court that the defendants’ movie did not infringe on the plaintiff’s copyright, the Court emphasized that the purpose of copyright law is to protect original authorship, not artistic elements that are freely and public available. Id. at 629. As a result, the Court affirmed the district court’s grant of summary judgment to defendants on the copyright infringement claim.

Plaintiffs can pursue a breach of contract claim even without a valid copyright claim

The Benays argued that they had an implied-in-fact contract with the defendants, which requires them to show that: 1) plaintiff submitted the work for sale to the defendants; 2) plaintiff conditioned the use of the work on payment; 3) defendant knew or should have known of that condition; 4) defendant voluntarily accepted the work; 5) defendant actually used the work; and 6) the work had value. Id. at 629. Because Bedford Falls accepted the screenplay from the Benays’ agent with the understanding that it would compensate the Benays if it used the screenplay, an implied-in-fact contract was created that protected the entire screenplay concept.

Under California contract law, an inference of breach of an implied-in-fact contract through copying is allowed when there is evidence of defendant’s access to the work and “substantial similarity” between the two works at issue. Id. at 631. In these breach of contract claims, a court can consider all of the elements of a work and its idea, not just those elements protectable by copyright law, which means that it can consider the title, the historical facts upon which the works are based, and the general plot outlines. Id. Considering both the copyrightable and non-copyrightable elements of the two works, the Court found substantial similarities, supporting plaintiffs’ claim of breach of contract. Id. at 632.

Accordingly, the Circuit Court reversed the district court’s entry of summary judgment as to breach of contract and remanded the case on those grounds. Id. In doing so, the Ninth Circuit stated that “contract law… is the most significant remaining state-law protection for literary or artistic ideas.” Id. at 629.

About the Authors

Tom Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property protection and exploitation.

Image Credit: © cynoclub

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Tom Zuber
Ryan Smith

Companies Mentioned

Bedford Falls Productions, Inc.

Radar Pictures, Inc.

Warner Brothers Entertainment, Inc.

Also See:

Seltzer v. Green Day: Ninth Circuit Upholds Green Day’s Fair Use of Street Art

Hart v. Electronic Arts, Inc.: Third Circuit: No First Amendment Protection for Using Athlete’s Likeness in Video Game

Metropolitan Regional Information Systems v. American Home Realty Network: Fourth Circuit Rules Web Site Owner Can Enforce Copyright on User-Uploaded Photos

Cariou v. Prince: Court Finds Appropriated but Altered Photos Protected under Fair Use

Golan v. Holder: Divided Supreme Court Upholds Copyright Statute Taking Works Out of the Public Domain

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Companies Mentioned

Copyright Law

The following companies are mentioned in Copyright Law Updates:

MGA Entertainment (HK) Ltd.

Mattel, Inc.

American Society of Composers, Authors, and Publishers

MGA Entertainment Inc.

UMG Recordings, Inc.

RealNetworks, Inc.

AOL LLC f.k.a. America Online, Inc.

Northern Lights Products, Inc. d.b.a.

Litecubes, LLC

Poof Apparel Corp.

Derek Andrew, Inc.

Metro-Goldwyn-Mayer Pictures, Inc.

Geoffrey Productions, Inc.

Universal City Studios LLLP

Twentieth Century Fox Film Corp.

Turner Network Television LP, LLLP

Turner Network Sales, Inc.

Turner Classic Movies, LP, LLLP

Simon & Schuster, Inc.

Turner Broadcasting System, Inc.

The Cartoon Network LP, LLP

Paramount Pictures Corp.

NBC Studios, Inc.

Disney Enterprises, Inc.

Veoh Networks, Inc.

CSC Holdings, Inc.

CBS Broadcasting Inc.

Cablevision Systems Corp.

Cable News Network LP, LLLP

American Broadcasting Companies, Inc.

Kamind Associates, Inc. a.k.a. KAM Industries

Westbound Records, Inc.

All Headline News Corp.

Janice Combs Publishing, Inc. d.b.a. Justin Combs Publishing

American Software Development Company, Inc.

Bad Boy Records LLC

Affordable Video Systems, Ltd.

Bad Boy Entertainment, Inc. d.b.a. Bad Boy Records

Dream Games of Arizona, Inc.

Yahoo! Inc.

Frank Diana City Entertainment

Television Music License Committee

PC Onsite


American Home Realty Network, Inc.

Julie Ann Bible

Robert E. Treuhaft and Jessica L. Treuhaft Trust

RDR Books

Power Ventures, Inc.

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