IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- January 10, 2013


Table of Contents

Harney v. Sony Pictures Television, USCA First Circuit, January 7, 2013
Click here for a copy of the full decision.

  • Circuit court affirms summary judgment in favor of defendants, on plaintiff photographer’s copyright infringement claim, finding that a re-creation of the image in plaintiff’s photo appearing in defendants’ made-for-television movie was not substantially similar to plaintiff’s photograph.

Plaintiff Donald Harney, a freelance photographer, brought a copyright infringement action against Sony Pictures Television and A&E Television Networks, LLC, asserting that an image depicting his copyrighted photograph that appeared in defendants’ made-for-television movie infringed his photograph. The district court granted defendants’ motion for summary judgment, finding very few shared protectable elements between defendants’ re-created image and plaintiff’s photograph and holding that no reasonable jury would find substantial similarity between the works. (Read our summary of the district court’s decision here.) Plaintiff appealed and the First Circuit affirmed.

Plaintiff, on assignment for a newspaper, snapped an unposed photograph of a blond girl in a pink coat riding piggyback on her father as they emerged from a Palm Sunday church service in the Beacon Hill section of Boston in April 2007. The girl sat on her father’s shoulders holding a palm leaf and the father held a church service program. Plaintiff placed the pair at the center of his photograph, making them visible from the middle of the father’s chest upward, and against the background of a tree and church steeple, which appear above the father and daughter. The plaintiff also took the picture using a flash, and shadows are visible within the frame. The newspaper published the photograph with an accompanying caption about Palm Sunday, identifying the father as Clark Rockefeller. Within the year, the father-daughter pair became the center of national law enforcement and media attention when the father in the photo abducted his daughter and fled Massachusetts during a custody visit. In the subsequent search for the pair, authorities discovered that the father, who claimed to belong to the Rockefeller family, was really a professional imposter from Germany named Christian Gerhartsreiter. The FBI used plaintiff’s photograph in its wanted poster, and the news media widely distributed the image in the course of covering the saga.

Sony produced a made-for-TV movie about Gerhartsreiter that aired on A&E. In the movie, defendants depicted the role that plaintiff’s photograph played in the manhunt by re-creating the image using actors portraying the father and daughter, clothed and posed in a manner similar – but not identical – to the way that Gerhartsreiter and his daughter appeared in plaintiff’s photograph. In particular, in the movie image the daughter did not hold a palm leaf, the father did not hold a church program, the background of the tree and church was absent, and the specific lighting and shadows that plaintiff had created were missing.

In granting summary judgment, the district court found that the movie image did not copy protectable elements of the photograph. According to the court, many of the elements of the photograph, including the pair’s clothing and their unscripted poses in the photograph, were not protectable because they were simply facts that plaintiff recorded but did not create, and many of the arguably protectable elements of the photograph – plaintiff’s choice of the tree and church as the background, the lighting and the shadows – were absent from the movie image. The only shared element of the work that arguably was protectable was plaintiff’s positioning of the father-daughter pair in the center of the photo, which the court found to be “an element of minimal originality” that could not give rise, on its own, to an infringement claim.

On de novo review of the district court’s grant of summary judgment, the First Circuit agreed that only plaintiff’s expressive choices, not the subjects of the photograph (the father and daughter) nor the undirected arrangement of those subjects (the daughter on her father’s shoulders, their clothes, the items they carried and their location) were protectable. The court further concluded that while plaintiff’s photo did include protectable creative expressions, including the lighting, the use of shadows and the inclusion of the background, the movie image included only one of those protectable elements, the placement of the subjects in the center of the frame, with only parts of their bodies depicted. However, the First Circuit agreed with the district court that this shared element alone could not support a finding of substantial similarity. “Sony copied little of Harney’s original work – only the placement of Gerhartsreiter and [his daughter] in the photograph – and no jury could conclude that the similarity resulting solely from that copying is substantial. Moreover, given the differences in background, lighting and religious detail, a reasonable jury comparing the entirety of the two works could not conclude that the ordinary observer would “regard their aesthetic appeal as the same.”

On appeal, plaintiff argued that the district court’s dissection analysis – discerning the protectable, expressive elements of the photo from the unprotectable, factual elements – was inapposite because Sony copied the photo’s expression of “the Rockefeller story” and not simply the factual content of his photograph. The court disagreed for several reasons. First, plaintiff’s argument “leaves no room for the dissection analysis that our precedent prescribes …” Second, the court reasoned that plaintiff’s argument amounted to an effort to enlarge the scope of copyright protection by attributing to the photo an idea – Gerhartsreiter’s deception – that is not discernible from the image itself, did not originate with plaintiff and can only be discerned in light of events that happened after Harney took the photo. “The idea of the deception, of course, is not itself protectable. The photo of the smiling pair may be understood as an expression of that idea only when we take into account the subsequent events that revealed the falsity underlying the specific father-daughter relationship that Harney randomly documented.” After-the-fact interest in the photograph does not alter the originality of those individual components of the work and change plaintiff’s creative contributions to the photo. “[R]ecalibrating a work’s originality based on a new idea of what it expresses would undermine the distinction that remains between ideas and expression in visual works. In short, we do not see how subsequent events can fortuitously transform unoriginal elements of a visual work into protectable subject matter.”

For similar reasons, the court also rejected plaintiff’s argument that the pose of the subjects, which was copied in the movie’s re-created image, was the “expressive heart” of the photo and should be entitled to copyright protection. “[A]s we have explained, any expression of the Gerhartsreiter story seen in the photo is attributable not to the photograph itself but to unrelated news events that associated the photo with the new idea of deception. That new association did not, however, change the character of the photo’s unprotectable factual components.” Without the symbols of Palm Sunday or the church or any identifiable location in the background, the re-created image does not re-create “the original combination of the father-daughter, Beacon Hill and Palm Sunday.”

Webb v. Stallone, USDC S.D. New York, December 26, 2012
 Click here for a copy of the full decision.

  • District court grants summary judgment in favor of defendants Sylvester Stallone and motion picture production companies that created the film The Expendables in copyright infringement claim by writer who claimed the film was copied from his work, finding that although defendants could not prove independent creation as a matter of law, writer could not show defendants had access to his script or that there was striking similarity between the scripts.

Plaintiff Marcus Webb brought a copyright infringement action against Sylvester Stallone, cowriter David Callaham and various entities involved in the production and distribution of the 2010 motion picture The Expendables. Defendants moved for summary judgment and the court granted the motion in its entirety.

After watching news reports about Blackwater and mercenaries, defendant David Callaham suggested to Warner Bros. that he write a script about a group of American mercenaries taking on a foreign dictator. He sent Warner Bros. three drafts of the script, tentatively titled Barrow, the last of which was sent Jan. 24, 2006.

Plaintiff Marcus Webb, a writer for Walker Digital LLC and various trade magazines, wrote a screenplay, The Cordoba Caper, featuring American mercenaries who are hired to stop a genocide. The story had two villains, General Garza, a Latin-American dictator, and Colonel Torres, his second-in-command. Webb wrote his screenplay in 2006, after Callaham finished his last draft of Barrow. In 2008, Stallone told his agents that he wanted to do an action-oriented ensemble film. In his declaration in support of the motion for summary judgment, Stallone stated that he used Callaham’s script as a “starting point” for his screenplay for The Expendables, and he denied ever seeing Webb’s script.

Defendants argued that Webb could not establish that defendants infringed his copyright for three reasons: (1) Callaham completed Barrow, defendants’ source for The Expendables, before plaintiff wrote The Cordoba Caper, establishing creation independent of Webb’s work; (2) Webb could not show that Stallone had access to The Cordoba Caper when Stallone drafted The Expendables; and (3) no substantial similarities existed between the works.

The court rejected defendants’ argument that because Barrow was written before The Cordoba Caper, and because Stallone represented that Barrow served as the starting point for The Expendables, defendants had established independent creation of The Expendables. Noting that the affirmative defense of independent creation is generally a question for the fact finder, the court concluded that Stallone’s declaration alone, attributing The Expendables to one screenplay and disclaiming attribution to another, was insufficient to carry defendants’ burden of strong, convincing and persuasive evidence of independent creation. The court found this to be especially true in light of the fact that Stallone had previously submitted a declaration in a Writer’s Guild of America arbitration claiming that The Expendables was “an original” that did not use “one word, one comma, one iota” from Barrow.

Next, the court considered whether Webb had presented any evidence that Stallone had access to The Cordoba Caper screenplay prior to writing The Expendables. To prove access, plaintiff needed to show either a particular chain of events or link from his work to the allegedly infringing work, or that the plaintiff’s work is widely disseminated. The court found that Webb’s circumstantial evidence of access was weak at best and required “almost endless speculation to explain how Webb’s submission of The Cordoba Caper to amateur screenplay competitions ended up in front of Stallone.” The court noted that even after full discovery, plaintiff had submitted no evidence that anyone who worked for Stallone or even anyone who worked at the companies that worked for Stallone had any connections to any of these screenwriting competitions. “In the absence of this or other evidence presenting a reasonable possibility that Stallone viewed The Cordoba Caper, as opposed to mere speculation or conjecture, plaintiff has failed to raise a genuine issue of material fact on access.”

Webb also argued that, even in the absence of sufficient evidence of access, the works were strikingly similar, precluding any possibility of independent creation. The court disagreed, finding that no reasonable juror could find that The Expendables was so nearly identical to The Cordoba Caper as to preclude any reasonable possibility of independent creation. Webb listed 20 examples of alleged striking similarities between The Expendables and The Cordoba Caper, but the court concluded that “none of these examples [is] sufficient to permit a reasonable juror to find ‘striking similarity,’ whether considered independently or in the aggregate.” By way of example, the court noted that plaintiff asserted that the names of the antagonists in both works included a Latin-American dictator named General Garza. The court rejected this alleged similarity, noting that Garza is the 34th most common Hispanic surname in the United States. Similarly, the court rejected plaintiff’s assertion that the lead female characters in both works were strikingly similar, noting “the idea of a heroine allied with the protagonist who is related to the antagonist and captured by the antagonist’s minions is hardly new,” and that beyond these stock similarities, the characters were substantially different. The court also rejected plaintiff’s argument that a number of action scenes were strikingly similar, holding that the scenes were scene a faire, stock devices standard in action movies. Stating that it had not only considered all the allegedly most egregious similarities between the works, but “the entire litany” of plaintiff’s “striking similarities,” the court found “none of them remotely striking or legally sufficient.” The court concluded: “Whether considered at the high-concept levels of plot, theme, pacing, etc., or at the detailed level of specific points, plaintiff has failed to show The Cordoba Caper is so ‘strikingly similar’ to The Expendables ‘as to preclude any reasonable possibility of independent creation.’”

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.


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