IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- October 10, 2012

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Mena v. Fox Entertainment Group, USDC S.D. New York, September 27, 2012
 Click here for a copy of the full decision.

  • District court grants defendants’ motion to dismiss plaintiff’s copyright-infringement action, finding no substantial similarity between plaintiff’s copyrighted screenplay and the pilot episode of defendants’ television series.

Plaintiff Steven Mena, author of a copyrighted screenplay for Transience, a feature-length film, brought suit against defendants, entities involved with the production of Past Life, a television series that aired on defendant Fox Network for a short time in 2010, for copyright infringement, alleging that the pilot for the television show infringed on his copyright in the Transience screenplay. Transience tells the story of a detective who is attempting to solve a series of abductions and murders and who is aided by a nine-year-old girl, the patient of an old psychiatrist friend, whose nightmares turn out to be flashbacks of her own death in a previous life at the hands of the killer. Past Life was an hour-long television series featuring two main characters, a former New York Police Department detective and a psychiatrist, both of whom are employed by a private institute dedicated to solving mysteries in the past lives of its patients. The pilot episode concerns a fourteen-year-old boy who experiences flashbacks and who, throughout the course of the pilot, the main characters discover is actually the reincarnation of an eight-year-old girl who disappeared along with her sister before the boy was born. Following the clues from the boy’s “regressions,” the main characters and a team of FBI investigators eventually solve the mystery of the girls’ disappearance. The district court granted defendants’ motion to dismiss, finding no substantial similarity between the works.

Defendants’ motions to dismiss assumed both that plaintiff held valid copyrights and that defendants had access to plaintiff’s screenplays, and the only issue before the court was substantial similarity between the works. At the outset, the court reiterated that, under Second Circuit precedent, both the “more discerning observer test” (used to filter out the protectible elements from the unprotectible elements of the works) and the “total concept and feel” test were applicable – contrary to arguments made by both plaintiff and defendants. Finding that plaintiff’s screenplay was a work comprising “original combinations of ideas and concepts, as well as components drawn from the public domain” (both protectible and unprotectible elements), the court applied the “more discerning observer test” to the individual protectible elements of plaintiff’s work, and then employed the ”total concept and feel” analysis to consider his screenplay as a whole. Based on both of those tests, the court concluded that Past Life did not infringe Transience.

The court first considered the setting, mood and theme of the two works and concluded that these elements were significantly different, with Transience exhibiting all of the hallmarks of a “dark crime drama” and Past Life intending to be a “more lighthearted investigatory adventure.” The court noted that the plaintiff’s work was set in a small Midwestern community, with all of the action in the story occurring in or around the same town, while in Past Life, the protagonists travel in locations on the East Coast (Connecticut, New York City and Washington, D.C.) and rural locations in Virginia and North Carolina. The pilot also used sweeping urban vistas and stock images of well-known locations and Transience did not. The mood in Transience is dark, with chilling imagery, several violent scenes, blood, brutality and dark characters struggling with “failed relationships, accidental deaths, estranged family members, guilt, violence and terminal illness.” In contrast, Past Life is clearly intended to appeal to a more general audience, with characters who are more likeable and less developed, who often engage in humorous banter and reveal little beyond what is necessary to drive the plot, and only hints of violence in a few brief flashbacks that imply drowning. The court found that both works featured reincarnation as a theme, but concluded that the general concept of reincarnation was not a protectible element, and the treatment of reincarnation, even though both a prominent theme and a plot device in both works, was viewed and presented very differently, including that Transience examines the nature and implications of reincarnation at length, while Past Life offers only cursory and conclusory explanations for the phenomenon.

With respect to the elements of narrative and plot, the court acknowledged that any review of the works must recognize the obvious parallels between the plots. Both works are “crime procedurals” in which the investigators solve the decades-old mysteries with clues from past-life flashbacks. The plots of both rely on the process of inducing and interpreting “regressions,” identifying “triggers,” and deciphering disjointed clues to discern the trauma that happened to a reincarnated individual in a prior life in order to resolve a contemporary problem. Both include similar plot points, such as an initial flashback; a concerned parent meeting with a psychiatrist; attempts to induce flashbacks to gather more clues; the struggle to decode a difficult clue obtained from a flashback; an incident that increases the sense of urgency for the protagonists; a climactic moment in which the reincarnated person buckles under the strain of the past-life memories; an event that prompts the reincarnated person to disappear and the search that ensues; and an emotional reunion with members of the reincarnated person’s family from his or her past life. The court concluded, however, that these commonalities were insufficient to support a finding of substantial similarity absent substantial similarities between specific scenes or sequences. The common plot points also generally flowed from the concept of a crime procedural involving reincarnation and would likely be found in any story involving an individual with past-life memories of a crime, making them scènes à faire that that are not protectible.

Plaintiffs argued that several scenes in Past Life were directly drawn from Transience, including an opening scene in which a bright light against a dark background grows so as to appear that the viewer is emerging from the light, a scene involving a flashback by the reincarnated victim suggesting her death, a scene in which the victim runs away and is found by the protagonist, scenes involving a tower that becomes significant to the plot development, and a situation involving a false lead. The court disagreed, finding that, to the extent that these scenes and scenarios were protectible, they were treated very differently in both works. In addition, the court noted that certain elements, including the use of the white light and the idea of passing through that light and emerging on the other side, and a sequence in which a young person, haunted by unexplained visions of the past, runs off to a strange location and is later found and questioned, are general and recognizable plot elements not entitled to protection. Similarly, the “red herring” of a false lead is a routine element of any detective story, according to the court, and therefore not protectible.

The court likewise rejected plaintiff’s argument that Past Life appropriated key characters from Transience, including the reincarnated victims, the detectives and the psychiatrists. Noting that “[t]he bar for substantial similarity in a character is set quite high,” the court concluded that the works’ treatment of the various characters significantly differed such that no substantial similarity could be found. The facts that both reincarnated victim characters embody the concept of reincarnation and that their “regressions” serve as a source of clues, alone, could not sustain a finding of substantial similarity, according to the court. Neither could the fact that both were girls in their past lives, especially since, as the court noted in a footnote, the similarity between the past lives ended there. Likewise, although both male detectives shared certain characteristics (both are tough, capable, determined detectives who follow clues and facts, both are widowers, and both are practical and skeptical of reincarnation), the “image of the hardscrabble detective is … a recurrent figure throughout literature and serves as a stock character in myriad genres,” and “the motivation of a lost loved one, a despair mitigated only by the thrill of the chase, and the promise of love renewed are all familiar plot devices.” According to the court, plaintiff’s list of alleged common attributes between the two characters amounts to “only a general sketch of a character” – an unprotectible idea – not a “recognizable identity that can be linked to a particular figure” – the protected expression of that idea. Beyond these general character traits, the two detectives were also different dramatic characters. The psychiatrist characters were also portrayed very differently, in their discoveries of the reincarnated victim’s “status,” their beliefs about reincarnation and, in particular, the way that they interacted with detective protagonists, according to the court.

After reviewing the works with the “more discerning observer” standard and finding no substantial similarity, the court turned to the “total concept and feel” standard to consider plaintiff’s “original contributions” in terms of how he “selected, coordinated, and arranged” the elements of the work, in order to determine whether Transience and Past Life are substantially similar, and concluded that the “total concept and feel” of Past Life was sufficiently different from that of Transience. While Transience was, in plaintiff’s words, an “unapologetically dramatic, intense, and emotional thriller with little comic relief and hopeful endings," Past Life was not, containing, the court noted, many instances of comic repartee designed to make the characters appeal to a wider audience. And while “exciting” in some scenes, Past Life did not include those gruesome and suspenseful elements that made Transience far more “dramatic, intense, and emotional.” The court also found that the selection, coordination, and arrangement of scenes and elements differed substantially in both works, each of which contained subplots and twists not found in the other. Likewise, even arguably similar scenes occurred at different times in the stories, important clues were discovered by different people and at different stages in the investigation, and analogous characters were developed to different degrees. The court also noted that plaintiff wrote Transience as a feature-length film, “stand-alone and self-contained,” while Past Life was structured as a serial program proceeding episode by episode. “Exercising common sense and reasonable judgment, the [c]ourt is unable to pinpoint any sufficiently original aesthetic decisions that appear to have been copied by Fox. Consequently, [this] court concludes that Transience and Past Life are not substantially similar under [the] ‘total concept and feel’ analysis.”

Don Johnson Productions, Inc. v. Rysher Entertainment, Cal. Ct. App., October 1, 2012
 Click here for a copy of the full decision.

  • California Court of Appeal affirms in part judgment in favor of plaintiffs, holding that statutory four-year renewal requirement for waivers of statute of limitations does not apply to tolling agreement, and that plaintiff’s breach of contract action was not time barred, but reduces damages award, finding that jurors committed misconduct by including prejudgment interest.

Plaintiff Don Johnson Productions, Inc., a “loan-out” corporation owned by actor Don Johnson, brought suit in February 2009 against defendants Rysher Entertainment LLC, 2929 Entertainment, LP, and Qualia Capital LLC, the producers and financiers of the television series Nash Bridges, for breach of contract, conversion, unjust enrichment, an accounting, and interference with prospective economic advantage. In December 1994, plaintiff and defendant Rysher entered into a contract for the services of the actor Don Johnson on Nash Bridges, which provided that plaintiff would own a 50-percent interest in the series copyright if the series became eligible for syndication. The contract also provided that plaintiff was entitled to 50 percent of the profits of contingent compensation. In 1999, defendant Rysher sold the syndication rights of the series and, since that time, Nash Bridges has been syndicated worldwide. Defendant Rysher failed to remit any profit from the syndication to plaintiff. In May 2002, plaintiff and defendant Rysher entered into a tolling agreement, which provided that all statutory prescribed periods of limitations would be tolled beginning on May 15, 2002.

At trial, defendants asserted that plaintiff’s claims were barred by the statute of limitations, but the trial court granted plaintiff’s motion for a directed verdict on defendants’ statute of limitations defenses and, thereafter, entered a $23.2-million judgment against defendants, consisting of $15 million in damages and $8.2 million in prejudgment interest. Defendants appealed, arguing that the suit was filed after the tolling agreement expired, no substantial evidence existed to support the court’s contractual interpretation and damage award, and the jury committed misconduct because its verdict included prejudgment interest.

Defendants argued that plaintiff’s complaint was barred by the statute of limitations. Plaintiff filed the complaint in February 2009, and both sides agreed that the contract claims vested in 1998, and therefore plaintiff’s claims were barred by the four-year statute of limitations for written contracts under California law. The defendants argued that the tolling agreement between the parties did not cure the statute of limitations defect because, under Section 360.5 of the California Code of Civil Procedure, waivers of statutes of limitations must be renewed every four years. Because the tolling agreement was executed more than four years before plaintiff filed his suit and was never renewed, defendants argued that plaintiff’s claims were barred by the statute of limitations.

The Court of Appeal rejected defendants’ argument, finding that Section 360.5 did not apply to the tolling agreement. After reviewing the statute’s legislative history, the court determined that Section 360.5 applied only to “waivers” of statutes of limitations, which are different from a tolling agreement. When parties enter into a tolling agreement, noted the court, a potential defendant has not necessarily waived the right to assert the statute of limitations defense. Since plaintiff and defendant Rysher entered into a tolling agreement, and not a waiver of the statute of limitations, Section 360.5’s four-year renewal requirement did not apply to invalidate the tolling agreement, and plaintiff’s 2009 filing of the complaint was timely.

Defendants also argued that there was no substantial evidence to support the contract interpretation and the damages award, asserting that the contract should be interpreted so that the contract’s contingent compensation section was controlled solely by the contract’s adjusted-gross-receipts provision. Plaintiff countered that the contract provided for an additional compensation stream based on its 50-percent copyright ownership. The Appellate Court found substantial evidence that supported plaintiff’s view of the contract, including testimony that Johnson had received no adjusted gross receipts compensation in a prior successful series. Defendants also argued that the damages award was improper because there were no profits resulting from any breach of plaintiff’s copyright interest, as production costs had exceeded the gross receipts. The court disagreed, finding that substantial evidence existed of profits, including testimony that, under Generally Accepted Accounting Principles, a $71.4-million “expense” that was ultimately forgiven during corporate restructuring was not an expense that could offset damages because it was never paid.

Finally, defendants argued that the jurors committed misconduct because their $23.2 million verdict included $8.2 million in prejudgment interest, even though they were not given instructions to calculate prejudgment interest. The appellate court agreed, noting evidence of extensive discussion between the jurors of the desirability of including prejudgment interest, as well as an express agreement to do so, and reversed the $8.2 million prejudgment interest award. The court affirmed the $15 million damages award, however, because defendants had raised no issue concerning this award.


For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we inform you that any advice (including in any attachment) (1) was not written and is not intended to be used, and cannot be used, for the purpose of avoiding any federal tax penalty that may be imposed on the taxpayer, and (2) may not be used in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein.

Published In: Art, Entertainment & Sports Updates, Civil Procedure Updates, Civil Remedies Updates, General Business Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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