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.
Tom Zuber and Ryan Smith of Zuber Lawler & Del Duca
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.
Subscribe to Copyright Law Updates
It's FREE and only takes seconds
About the Authors
Image Credit: ©iStockphoto.com/ cynoclub