IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- March 7, 2013


Table of Contents

Wild v. NBC Universal, USCA Ninth Circuit, February 28, 2013 (unpublished opinion)
 Click here for a copy of the full decision.

  • Ninth Circuit affirms dismissal of copyright infringement claim without leave to amend, finding no substantial similarity between plaintiff’s graphic novel and NBC’s television series Heroes and that new allegations regarding access, if made, would not impact the analysis

Plaintiff Jazan Wild brought copyright infringement and state law claims against defendants, entities involved in the production of the NBC television show Heroes, asserting that the fourth season of the series infringed his three-part graphic novel Jazan Wild’s Carnival of Souls. The district court took judicial notice of the two works and dismissed the complaint without leave to amend the complaint, finding a lack of substantial similarity in their protectable elements. The district court also dismissed plaintiff’s state law claims as pre-empted by the Copyright Act. On plaintiff’s appeal, the Ninth Circuit affirmed.

After an independent review of the two works, the appellate court agreed with the district court that “[o]ther than the presence of generic carnival elements and standard scenes that logically flow from those elements, the two works differ radically in their plot and storylines, their characters, the dialogue, the setting and themes, and the mood.” The appellate court also rejected plaintiff’s contention that the two works are visually similar, based on a comparison of a number of screen shots from Heroes with individual frames from Souls. The court concluded that these scenes (depictions of a character approaching a carnival, characters in the house of mirrors and a view through a gun sight) were unprotectable scenes a faire. Any remaining comparable elements were random similarities scattered throughout the works insufficient to support a claim of substantial similarity.

Plaintiff argued that the district court abused its discretion by dismissing his claims without leave to amend, asserting that he could allege additional facts concerning NBC’s alleged access to his graphic novel. The Ninth Circuit disagreed, finding that the district court’s analysis assumed that NBC’s access to the work and any amendment on the issue of access would have no impact.

Wilder v. CBS Corporation, Inc., USDC C.D. California, February 13, 2013
 Click here for a copy of the full decision.

Plaintiff Angela Wilder created a treatment for a one-hour daily talk show titled The Mothers’ Hood, dedicated to interests of mothers and motherhood and involving three to five hosts, at least two of whom would be celebrities who would share their own parenting experiences. In December 2008, Wilder had a pitch meeting with Sony Pictures Television programming senior vice president Holly Jacobs, during which Wilder gave a very detailed pitch of the show, handed Jacobs two copies of the treatment, and stated that, if Sony decided to produce the show, she both expected to be compensated and wanted to be involved as an executive producer, writer and co-host. At the end of the meeting, Jacobs told Wilder that Sony was passing on the show. In October 2010, CBS aired The Talk, a very similar show. The show was produced by CBS in partnership with RelativityREAL LLC and its CEO, Tom Forman (CBS defendants). Wilder alleges that Jacobs had close ties with Forman and that Jacobs provided the CBS defendants with her treatment and other confidential materials, from which they produced The Talk. Wilder subsequently sued, alleging seven causes of action – breach of implied contract against Sony, breach of confidence against Sony and Jacobs, breach of the implied covenant of good faith and fair dealing against Sony, tortious interference with contract against Jacobs and the CBS defendants, tortious interference with prospective economic relationship against Jacobs and the CBS defendants, unfair competition against all defendants, and civil conspiracy against Jacobs and the CBS defendants. All defendants moved to dismiss.

With respect to the breach of implied contract claim, in order to establish the so-called Desny claim under California law, a plaintiff must show that she prepared the work, disclosed the work to the offeree for sale, and did so under circumstances from which it could be concluded that the offeree voluntarily accepted the disclosure knowing the conditions on which it was tendered and the reasonable value of the work. The court found that Wilder’s allegations that she created the treatment, disclosed the work to Sony through Jacobs for sale at the pitch meeting (orally and by giving Jacobs copies), and disclosed to Sony through Jacobs that she both wanted payment and involvement in the production of the show if produced were sufficient to survive a motion to dismiss by Sony, even though Sony did not ultimately produce the show.

Similarly, the court found that Wilder had adequately alleged each element of the breach of confidence claim – that she conveyed confidential and novel information about the treatment when she discussed it and gave copies of it to Jacobs, that based on standard industry and custom Jacobs and Sony knew that this disclosure was done so in confidence and that confidence was to be maintained, and that Jacobs subsequently used this information in partnership with the CBS defendants to produce The Talk. California’s Unfair Practices Act prohibits unlawful business practices, and the court found that Sony’s unfair competition liability is coextensive with its tort liability for breach of confidence, as its potential tort liability would make the defendant’s business practice unlawful under the Act. Accordingly, the court found that Wilder also sufficiently pleaded her unfair competition claim against Sony to the extent it arose out of the alleged breach of confidence, but dismissed Wilder’s breach of implied covenant of good faith and fair dealing claim as duplicative of her breach of implied contract claim, as Wilder’s allegations for both were the same.

The CBS defendants and Jacobs asserted that Wilder’s tortious interference, unfair competition and civil conspiracy claims are pre-empted by the Copyright Act, under the two-part pre-emption test adopted by the Ninth Circuit. Wilder does not dispute that her treatment falls within the subject matter of the Act for pre-emption purposes, satisfying the first prong of the test. Under the second prong, the Ninth Circuit has held that to survive pre-emption, the state law cause of action must protect rights that are qualitatively different from the copyright rights and must have an extra element that changes the nature of the action.

The court found that Wilder’s tortious interference claims and conspiracy claim are all pre-empted because they rely on the allegation that the defendants took her work and exploited it for their own gains when they produced and distributed The Talk, an allegation that amounts to no more than a claim that defendants encroached upon Wilder’s exclusive right to profit from the sale or reproduction of her original work. Because the claims are not qualitatively different from those guaranteed by the Copyright Act, the court found them to be pre-empted. Wilder argued that her tortious interference claims contain extra elements outside those of a copyright claim. With respect to the tortious interference with contract claim, she asserted that the additional elements she had to prove – the existence of a valid contract that the defendants knew of and intentionally interfered with and disrupted – made the claims qualitatively different. The court found that argument unpersuasive, noting that these additional elements in the state law claims merely mean that the state-created right is narrower than its copyright counterpart, not that it is qualitatively different, and therefore not pre-empted. Similarly, the court found that the “extra elements” of intentional interference with prospective economic advantage – the showing of an economic relationship between the plaintiff and a third party that the defendant knew of, intentionally designed to disrupt, and actually disrupted – are not “qualitatively different” elements and do not bring such a claim outside the scope of the Copyright Act. The court also found that Wilder’s unfair competition claim based on her tortious interference claims is pre-empted by the act.

With all the claims against the CBS defendants dismissed, the CBS defendants moved to strike all the allegations against them, under California’s anti-Strategic Lawsuit Against Public Participation (anti-SLAPP) statute. The anti-SLAPP statute provides that any cause of action against a person arising from any act of that person in furtherance of the person’s right of petition or free speech under the U.S. Constitution or the California Constitution in connection with a public issue is subject to a special motion to strike, unless the court determines that the plaintiff has established that there is a probability that the plaintiff will prevail on the claim. In order to prevail, the CBS defendants needed to make a prima facie showing that Wilder’s suit arose from an act in furtherance of their rights of petition or free speech. Once that showing was made, Wilder then would need to demonstrate a probability of prevailing on the challenged claims.

With respect to the first prong, the court found that the CBS defendants met the burden as to the first prong. It found that under the anti-SLAPP statute, the “act” was the production and subsequent distribution of The Talk, as that act is the underlying inducement for Jacobs and Sony to breach their implied contract, that the acts of producing and distributing were in furtherance of free speech, as entertainment also enjoys First Amendment protection, and that this act was in furtherance of the public issues of motherhood, pop culture and current events.

Because the court found that Wilder’s challenged claims were pre-empted by the Act, Wilder could not make a showing of her probability to prevail. Accordingly, the court dismissed all claims against the CBS defendants with prejudice and granted their anti-SLAPP motion. 

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/.


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