Opinion
No. 01-73898
October 28, 2002
OPINION AND ORDER
Before the Court is Defendant New Line Cinema's motion for summary judgment. The crux of this controversy concerns copyright infringement. In late 1998 and early 1999, Plaintiff Douglas Alan Stromback, an actor, aspiring screenwriter, and former professional hockey player, created an original poem entitled "The Keeper." Plaintiff then created an original treatment and outline of a screenplay based upon "The Keeper" poem, entitled "The Keeper." According to Plaintiff, various versions of both the poem and screenplays were registered with the Writers Guild of America and the Copyright Office.
Defendant New Line Cinema argues that only the screenplay and not the poem of "The Keeper" were federally registered, and thus compares "Little Nicky," the alleged infringing work, to only the registered screenplay. In his response, Plaintiff explains that the poem was also copyrighted under Registration No. TXU 893-361 but that he erroneously did not include this number in the complaint. (Apparently, Plaintiff has refused to provide New Line with a copy of either the poem or screenplay of "The Keeper", thus forcing New Line to contact the U.S. Copyright office for copies of the works. When New Line could not locate the poem, it questioned whether it was federally registered.) Accordingly, Plaintiff requests that we consider the poem version as registered, or allow him to amend the complaint. For the reasons discussed above in the text, even if we consider the poem as copyrighted and federally registered, no reasonable juror could find substantial similarity between the poem and the movie, "Little Nicky." Because the Court is granting Defendant's summary judgment motion, there is no need to allow Plaintiff to amend the complaint. The Plaintiff should know, however, that the Court considered the poem when making this ruling.
According to Plaintiff (and not specifically disputed by New Line Cinema), in early 1999, Mr. Stromback showed both the poem and the screenplay for "The Keeper" to Larry Hess and John Apothaker, individuals he had met in Los Angeles. Plaintiff contends that Mr. Hess and Mr. Apothaker passed "The Keeper" poem, treatment, outline, and several versions of screenplays to New Line Cinema. (New Line Cinema states that the Court can assume this "access" is true for purposes of this motion.)
After seeing "Little Nicky" in the theater, Plaintiff realized that it contained substantial similarities to his works and filed suit, naming Mr. Hess, Mr. Apothaker, New Line Cinema, and the three credited screenwriters, Adam Sandler, Steven Brill, and Tim Herlihy as Defendants. Plaintiff did not serve summons on Mr. Hess or Mr. Apothaker, and after discussions with New Line Cinema's counsel, dismissed the individual named screenwriters without prejudice, essentially consolidating this action into one directed at the movie's owner/distributor, New Line Cinema. Thus, New Line Cinema is the only Defendant in this litigation.
Initially, Plaintiff also included the movie "Mr. Deeds" as an infringing work, but subsequently dropped that allegation. Therefore, the only claim remaining is against New Line Cinema for its movie "Little Nicky."
Plaintiff argues that "Little Nicky" and Plaintiff's original works share a number of similarities in theme, character treatment and development, idiosyncratic character traits, and scene selection. Specifically, Plaintiff asserts that "The Keeper" poem (Ex. C to Response) is essentially a thematic prelude to "The Keeper" screenplay (Exhibit D to Response). Plaintiff describes the poem and screenplay as follows:
The Court quotes at length from Plaintiff's response (pages 3-7; citations omitted) because his description of the two works is important to consider because the Court ultimately rules against him at this stage of the litigation. As explained infra, even his descriptions — which point out similarities between the two works — illustrate overall that the two works are entirely different stories, and it would be incredibly hard to see any relation between the two if not for Plaintiff's assertion of similar themes, which as explained infra, are, in fact, very different.
The poem introduces a dark and dreary castle, a gatekeeper, a hellish place. The Keeper senses something is wrong . . . somebody wants to leave the castle ground." The character "has found a way out . . . he has found the gate he is going to open . . . he has left the castle behind . . . and the Keeper is yelling come back, come back." The screenplay "Keeper" presents a metaphoric story of Ted, a loser, misfit, odd character, battling his "antichrist" devil brother who wants to take over the earth. Ted's character is clearly not wholly of this world: he speaks in rhymes, fights devil voices in his head, napping at work, and traveling peripatetically up and down between a metaphorical hell, the basement in which he works trying to defeat his brother devil, and the world above. Ted is characterized as the white son of black parents. It is later revealed that his mother was an 18 year old who had an affair with a prominent politician, who it is also implied is the father of the antihero of the story, Governor John. The "Keeper" [screenplay] ends with Governor John trying and failing to kill Ted.
Plaintiff compares "Little Nicky" to "The Keeper" as follows:
"Little Nicky" is portrayed not as a metaphoric, but a literal story taking place between Hell and Earth. In "Little Nicky" the main character, Nicky, is characterized as a loser devil battling his brothers, one of whom is depicted as a black man, to prevent them (and eventually only one of them) from taking over the Earth. Nicky is portrayed as a conflicted character, forever shuttling between Hell below and the Earth above, speaking in "devil" voices, napping at odd times. As does Ted, Nicky reveals his "devilness" at a party, gets accosted by two gang members, gets interested in a woman "above" — Sue is Ted's interest at the National Paper, Valerie is Nicky's — and survives a climactic scene where his brother attempts to kill him. Ted's survival occurs as he fools two henchmen sent by Governor John to kill him by pretending his friend is him; Nicky's survival occurs as he fools henchmen sent by his brother into believing he is someone else. In the end, Nicky although he is the son of Satan, discovers his mother is a young-looking angel, and we are to infer his brothers are actually of different mothers.
"The Keeper" screenplay begins with Ted, the main character, speaking in rhymes: "I know who not I am but I opened the dam." As the story begins Ted goes into the basement at the National Paper after obtaining an assignment to look at various old files in the basement. Early on it is established that Ted is the son of a black mother. In the meantime, we are introduced to Governor John, an unbalanced and evil character who wants to be president of the United States. Ted immediately gets angry at the thought of Governor John. Ted meets with his friends in a bar where he reveals himself as a man who speaks in puns — "ass," "bass. Upon leaving the bar Ted goes home and begins talking to himself again in strange and disturbing rhymes.
Ted returns to the basement and starts to write rhyming clues about the Governor. Meanwhile, Governor John is shown sitting complacently with his cronies talking unpleasantly about a party. He says, "Soon I will control everything. God this world is full of stupid [expletive]."
Ted is next shown at a house party twitching. "My name is Ted and I am not dead. Nor do I revel with the devil." Ted confesses he was born in a dark and dreary castle, and that the keeper of that castle owns their flesh and bones. Repeated dungeon references are made throughout the screenplay.
Throughout the screenplay Ted is shown napping at odd times. Ted is shown to be interested in a woman named "Sue" also working for the National Paper. Ted approaches Sue through a trick (having Scott, his friend, turn the lights off at the National Paper at 9:10 p.m.) A recurrent theme of the screenplay is Ted's movement between the "dungeon" basement and the world. He is repeatedly ordered to the "dungeon" basement by his boss Dave. Ted reveals that the case he has been reading about in the basement has to do with a cult of the devil, in which Governor John was the prime suspect. He says, "I think he is the anti-Christ." Throughout this time whenever he is alone, and in the presence of his friends, Ted keeps speaking in rhymes. Ted reveals that he will expose John the anti-Christ to the world. "I think the Governor is the devil which he is." "The Governor is the keeper." The screenplay shows Ted speaking in rhymes while listening to a minister on television: "I'm not from the dam but I'm back whose back . . . your plan is to be the #1 man . . . because truly you are the devil or at least have the same heart." Ted has been mailing riddles to the National Paper dropping hints about the Governor. As the screenplay progresses, an image of a reporter on the street appears saying "the frenzy is building." Governor John decides to kill him. Ted tells him, "I am stopping the soul stealer." He says, "You're the devil." As the screenplay progresses, Ted finds out from his black mother that he was adopted from an 18 year old who had an affair with a politician — presumably Governor John's father making Governor John his evil brother or half-brother. A showdown between them is presaged in the story.
In the penultimate scene, Governor John's henchmen Maurice and Amir pull up at the National Paper at night, and get by the security guard. In a climatic scene, Ted fools Maurice into thinking that his friend Scott is really Ted and survives Maurice shooting off his gun. Sue comes to the basement to find Ted. In the final treatment, Ted becomes elected Governor and, presumably showing himself to have lost the battle in his head, reveals his own evil and rapes Sue.
Plaintiff describes in more detail "Little Nicky":
After the movie opens with a set up scene involving the death of John Lovitz, the "Little Nicky" VHS version shows a visual portrait of a hellish palace and the viewer is introduced to three brothers, Nicky, Adrian and Cassius. Nicky (played by Adam Sandler) is characterized as the subservient brother of the three. As the movie begins, Cassius wants to mind-wrestle with Nicky. We are also introduced to the gatekeeper of hell who tries to keep the dominant brothers Adrian and Cassius from leaving hell. After the dominant brothers Adrian and Cassius do leave hell to go to Earth, Nicky, the son of Satan, is sent up to Earth to retrieve his brothers and return them to hell. From the very beginning of the movie, Nicky goes up and down between hell and earth with much of the action taking place in subterranean locations. For example, the introductory scenes show Nicky hit by a subway and returning to hell before being sent back to Earth. Many other times Nicky returns to hell before going up to the Earth in the movie.
Nicky returns to the Earth, he discovers Popeye's Chicken, a recurring theme in the movie. Nicky portrays himself to a roommate on hell as being from the "Deep South." Nicky sleeps all the time and talks to himself as he sleeps in a sing-song, devilish-sounding voice. As the movie progresses, Nicky gets interested in Valerie, a girl he meets on Earth. At a party with his actor roommate Nicky reveals to the guests that he is a devil.
Nicky is on a mission to find Adrian and bring him back down to hell. Adrian has succeeded in causing trouble on Earth in part by occupying the body of New York's mayor. Unknown to humans, the mayor issues various proclamations that cause a frenzy in the City. Adrian wants to find Nicky to kill him so that he does not have to return to hell. Adrian turns into (or inhabits the body of) the Police Commissioner, and finds out where Nicky is hiding — in the subway. In the climactic scene between Nicky and Adrian, Nicky tries to disguise himself as a friend to get away from Adrian in the subway. Nicky survives the attempt to kill him. Nicky then finds out the truth about his mother, who is shown as a 20'ish California Valley girl angel. The movie has a Hollywood ending with Nicky remaining on Earth, marrying Valerie, and fathering a child.
Plaintiff's lawsuit against New Line Cinema alleges violations of The Copyright Act, 17 U.S.C. § 106, Lanham Act, 15 U.S.C. § 1125, and various state law claims which are preempted. Although formal discovery has not occurred (and this appears to be the fault of Plaintiff who has not prosecuted his case), New Line argues that the Court can grant summary judgment now because a comparison of the works shows that no reasonable juror could find them substantially similar. While Plaintiff argues that more discovery needs to be taken, the only outstanding discovery that he mentions are the various screenplays of "Little Nicky," which were never published to the public, and thus are not germane to this dispute. Therefore, the Court grants New Line's motion for summary judgment and dismisses Plaintiff's case in its entirety. However, the Court does not grant New Line's request for attorney's fees and costs to Defendant.
Also, in Plaintiff's complaint, he only alleges that the movie "Little Nicky" is an infringing work — not the various screenplays.
At the hearing on this matter on October 25, 2002, defense counsel also requested that the Court sanction Plaintiff's counsel for bringing forth this frivolous case. While the Court dismisses Plaintiff's case with prejudice, we do not find that it was so frivolous to merit monetary sanctions.
STANDARD OF REVIEW
The usual summary judgment standard applies: a motion under Fed.R.Civ.P. 56 may be granted if the pleadings and all supporting documentation show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.The movant bears the burden of demonstrating the absence of all genuine issues of material fact. See Talley v. Bravo Pitino Restaurant, Ltd., 61 F.3d 1241, 1245 (6th Cir. 1995). However, the moving party need not produce evidence showing the absence of a genuine issue of material fact. Rather, "the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986). The court must view all the evidence in a light most favorable to the nonmovant as well as draw all reasonable inferences in the nonmovant's favor. See Bender v. Southland Corp., 749 F.2d 1205, 1210-11 (6th Cir. 1984).
Once the moving party discharges its burden, the burden shifts to the nonmoving party to set forth specific facts showing a genuine triable issue. See Fed.R.Civ.P. 56(e); Talley, 61 F.3d at 1245. To create a genuine issue of material fact, however, the nonmovant must do more than present some evidence on a disputed issue. Consequently, a nonmovant must do more than raise some doubt as to the existence of a fact; the nonmovant must produce evidence that would be sufficient to require submission to the jury of the dispute over the fact. See Lucas v. Leaseway Multi Transp. Serv., Inc., 738 F. Supp. 214, 217 (E.D. Mich. 1990).
LAW AND ANALYSIS
I. Copyright Act (Count I)
To establish copyright infringement, a plaintiff must show: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991); Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093, 1095 (6th Cir. 1995). Because Plaintiff's ownership of a copyright to "The Keeper" is not disputed, the sole question is whether it was copied. Direct evidence of copying is rare, so frequently the plaintiff will attempt to establish an inference of copying by showing (1) access to the allegedly-infringed work by the defendant(s) and (2) a substantial similarity between the two works at issue. See Robert R. Jones Assocs., Inc. v. Nino Homes, 858 F.2d 274, 276-77 (6th Cir. 1988); Wickham v. Knoxville Int'l Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984). Here, Defendant has conceded access and focused its attack on the substantial similarity prong.
Again, for purposes of this motion, we are considering both the poem and screenplay of "The Keeper" as properly copyrighted because Plaintiff has submitted evidence in his response that the poem was registered — he just forgot to include the registration number in his complaint.
In his response, Plaintiff makes much of this "access" prong, arguing that it is intertwined with the analysis of substantial similarity and that there needs to be discovery on this issue. Plaintiff is correct that, if access is established (and Defendant has conceded for the purposes of this motion that it has been, so there is no need for discovery on this point to decide this motion), then the showing of substantial similarity can be less. See Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999) (recognizing that the degree of proof of access is inversely proportional to the strength of similarity between the two works at issue). Yet, as Defendant points out, there still must be a showing of substantial similarity between the works irrespective of the access question. See Wickham, 739 F.2d at 1097-98 ("The district court correctly concluded there exists no substantial similarity. Therefore, it became unnecessary to resolve the access issue. No amount of proof of access will suffice to show copying if there are no similarities.") (citation omitted) (emphasis added). As discussed above, the Court finds that there is not enough similarity to create a jury question, even with access being conceded by Defendant.
The Court recognizes that this inquiry of "substantial similarity" is inherently factual. As Arnstein v. Porter, 154 F.2d 464 (2nd Cir. 1946) noted many years ago, granting summary judgment, particularly in favor of a defendant, is a practice to be used sparingly in copyright infringement cases. Yet, the Sixth Circuit has held that a court may compare the two works and render a judgment for the defendant on the ground that as a matter of law a trier of fact would not be permitted to find substantial similarity. Wickham, 739 F.2d at 1097. In fact, this Court in Burns v. Grier, No 00-CV-70916, 2000 WL 1923514, * 2-3 (E.D. Mich. November 17, 2000) (J. O'Meara) did just this and found no copyright infringement as a matter of law without the question going to the jury. The Court does so here too.
In assessing "substantial similarity," Plaintiff requests that we apply an "extrinsic" test as well as an "intrinsic" test. An "extrinsic" test allows for expert testimony dissecting the works and determining whether they contain similar ideas subject to copyright protection. The "intrinsic" test is essentially the "ordinary observer" test, described below. The "intrinsic" test is usually undertaken without the benefit of experts. See Towler v. Sayles, 76 F.3d 579, 583-84 (4th Cir. 1996); Kamar Int'l, Inc. v. Russ Berrie Co., 657 F.2d 1059, 1062-63 (9th Cir.1981).
If the "extrinsic" test were the one employed by the Sixth Circuit, then we obviously could not grant Defendant's summary judgment motion right now as there has not been any expert discovery yet. But, as explained above, this is not the approach in this jurisdiction.
Significantly, the Sixth Circuit — while not formally adopting a specific approach — has typically used the "ordinary observer" test, which is the traditional standard of analyzing copyright infringement. See Ellis v. Diffie, 177 F.3d 503, 506, n. 2 (6th Cir. 1999). The ordinary observer test requires the trier of fact to gauge the similarities of the two works solely on the basis of his "net impression" and without relying on expert analysis or dissection (the "extrinsic test"). Id. This was the approach we used previously in Burns and the one prevalent in this jurisdiction. See, e.g., Winfield Collection, Ltd. v. Sun Hill Industries, Inc., No. 00-CV-74841, 2002 WL 1480832, *4 (E.D. Mich. June 20, 2002) ("[T]he `ordinary observer' test . . . is the traditional standard of copyright infringement.") (citations omitted). Accordingly, we employ it here.
As we held in Burns: "Summary judgment for defendant is appropriate even if the court concludes that the similarity between the works concerns a shared idea, if the court also concludes that no reasonable jury, properly instructed, could find the works substantially similar. . . The question of whether or not there exists a genuine issue of material fact with respect to the issue of substantial similarity is one of law for the Court." Burns, 2000 WL 1923514 at * 2 (citations omitted). This Court then conducted a "side-by-side examination" of the two sets of works to determine if a reasonable jury could find substantial similarity. Id. In undertaking this analysis, it is important to remember that "a general impression of similarity is not sufficient to make out a case of infringement." Mihalek Corp. v. Michigan, 814 F.2d 290, 295 (6th Cir. 1987) (citation omitted). Because ideas and general concepts themselves cannot be copyrighted, it is the court's task to examine the expression of the shared idea for substantial similarity of treatment.Wickham, 739 F.2d at 1097.
Here, the net impression of the works is entirely different. "The Keeper" is a story about Ted, a real person, who causes the downfall of the corrupt Governor of California and then takes his job. At the end of the story, Ted abuses his power and rapes a woman that has spurned his affections. Ted often speaks in rhymes and is weird and eccentric. For employment, he organizes files in the basement of a national paper in Los Angeles, which his boss refers to as the "cave" or "dungeon." The story shifts back and forth to the Governor who hopes to become President. At some point, Ted — who is reading old newspaper files — finds out that the Governor (then Secretary of State) was involved in a cult having something to do with the devil and got off the hook for a murder. Ted figures out that the Governor was responsible for the murder and undertakes an anonymous campaign of sending rhyming riddles to the newspaper that will ultimately reveal that the Governor is the murderer, the antichrist and the devil. (The use of terminology referring to the devil and hell are all metaphoric — the Governor is not really the devil.)
Eventually, the Governor figures out that the newspaper's riddles implicate himself and then sends someone to kill the "rhyming dude." Ted reveals himself and dares the Governor to kill him. The Governor orders his murder but Ted sets a trap for his friend, Scott, who the Governor's henchmen mistakenly think is Ted. They kill Scott thinking he is Ted. Ted videotaped the whole trap and sends it to the police. The Governor is arrested and Ted becomes the new Governor and rapes a woman.
"Little Nicky" is actually about the devil and his three sons, Cassius, Adrian, and Nicky. Adrian and Cassius pick on Nicky, the simple and sweet son, and mind wrestle with him causing him to say things he would otherwise not say. When the movie opens, the devil (Satan)is considering retiring after 10,000 years and his sons Adrian and Cassius want the job. Nicky wants his father to keep it. Satan decides to rule for another 10,000 years to maintain the balance of good and evil, and this greatly upsets Adrian and Cassius who concoct a plan to escape hell, travel to earth, and corrupt as many souls as possible to threaten the balance of good and evil. When they leave hell, they clog the portal, thus not allowing new souls to enter hell. Satan begins to decompose (literally, at one point he is a talking mouth) and sends his son Nicky after them to "bottle" them up and bring them back to hell.
Nicky reluctantly travels to earth and dies several times coming back to hell, only to be dispatched to earth once again by his decomposing father, Satan. On earth, Nicky meets a woman Valerie and falls in love. At one point, he dies trying to save her from a speeding train and is sent to heaven (and not hell) where he meets his mother, an angel, who tells him that he must release his inner good to battle his brothers on earth. She gives him a magic sphere from God to help him battle his brothers,
On earth, his brothers Adrian and Cassius are invading people's bodies and causing them to say and do things. They invade the mayor of New York and a preacher and cause them to say things to instigate corruption, like lowering the drinking age to 10. New York becomes a mess of corruption. Eventually, at the end, Nicky smashes the sphere from God and Ozzy Osbourne is released and bites the head off Adrian (who had turned into a bat). With both brothers in the bottle, Valerie kills Nicky by hitting him in the head with a rock (out of love), sends him back to hell, just in time to save his father. Satan survives, the brothers are forever trapped in the bottle, and the balance of evil and good is restored. Satan sends Nicky back to earth where he marries Valerie, has a son, and lives happily ever after.
The stories are entirely different. While both Nicky and Ted are weird and eccentric, only Ted talks in rhymes. Nicky has a speech impediment because his brothers beat him with a shovel when he was little. Ted works in a newspaper basement and causes the downfall of the Governor. He is attracted to a woman whom he eventually rapes. Imagery of hell and the devil are used as metaphors. In contrast, Nicky is a simple-minded, sweet, actual son of the devil who has to defeat his devil brothers on earth. "Little Nicky" is a comedy with a happy ending, while "The Keeper" is a bleak story with no apparent humor. There are too many differences to list. The overriding point is that the setting, characters, and events are very different between the two works, and the Court finds as a matter of law that no reasonable jury properly instructed would find otherwise.
The similarities that Plaintiff relies on are all superficial. While both works employ similar words such as the "devil," clearly the concept of hell and the devil are not protected expressions. While the basement is described as a hellish place, it is not really hell, as is the setting in "Little Nicky." While both works share a theme of "good versus evil," such a theme is commonplace and not protected. While Plaintiff argues that the sequence of events is similar (i.e. leaving hell (or the basement), bottling/battling brother (Ted is presumably the brother of the Governor in "The Keeper", although this is not conclusively established), attempted killing of main character), this is not enough to create a genuine issue of material fact on the issue of substantial similarity. The use of "up and down imagery" as Plaintiff argues also is not enough, especially where Nicky is literally going back and forth from hell and earth, and Ted simply leaves the basement at the end of the work day. While there is a love interest in both works, one ends in marriage and the other in rape, and love is a common thread throughout many works of art. There are also other trivial similarities such as racial allusions and supporting characters that are de minimis and not worth addressing in detail.
After watching "Little Nicky" and comparing it to "The Keeper," the Court finds that a reasonable person would not conclude that the Defendant unlawfully appropriated Plaintiffs protected expression by taking material of substance and value. Although there are some similarities between the works as described above, a close examination reveals there is no substantial similarity and that an average reasonable layperson upon such examination could not find substantial or sufficient similarity to establish copyright infringement.
Plaintiff has various responses that will only be briefly addressed. He argues that Defendant failed to establish "independent creation" as a defense to copyright infringement. Yet, as Defendant points out in its response, independent creation is a defense that can be made after Plaintiff establishes his prima facie case. Because Plaintiff has failed to establish "substantial similarity" between the works, Defendant does not need to argue "independent creation" in rebuttal. See Ellis v. Diffie, 177 F.3d at 507 ("[A]n inference of copying is rebuttable by evidence of independent creation of the allegedly infringing work.").
Finally, Plaintiff argues that New Line failed to attach the screenplay of "Little Nicky" as an exhibit, and that we are only analyzing whether the movie of "Little Nicky" infringes "The Keeper." Therefore, according to Plaintiff, there needs to be discovery because there could be infringement on the "intermediary acts" of the various screenplays leading up to the final product, the released movie. Yet, only the video or movie was published to the public — not the screenplays — and Plaintiff only alleges in his complaint that the movie is an infringing work — not the underlying scripts. Therefore, because the Court does not see how additional discovery would make a difference, and because Plaintiff's counsel at the hearing did not articulate a compelling reason for more discovery, the Court finds that we have enough information at this juncture to grant Defendant's summary judgment motion on the copyright infringement claim.
Plaintiff insinuates that the home video of Little Nicky (attached as an exhibit) is different than the actual movie theatrically released to the public, thereby implying that we do not have the relevant evidence before us to make an informed decision about substantial similarity. Yet, in New Line's reply, it attaches a declaration from Jeffrey Halsey, Vice-President of Video Services for New Line, attesting that the videocassette version is the same as the version released in theaters.
In Walker v. Time Life, 615 F. Supp. 430, 434, n 2 (S.D.N.Y. 1985), the court rejected this "intermediary acts" argument: "The Court considers the works as they were presented to the public. Plaintiff requests the court to compare the two works on the basis of lists of random similarities and on earlier scripts of the screenplay. This request is denied. Courts have routinely rejected requests to consider earlier drafts of the screenplay. Consideration of earlier versions of the screenplay is too unreliable in determining substantial similarity." (Emphasis added) (citations omitted).
II. Lanham Act (Count V)
Plaintiff also argues that the public would likely be confused if presented with "Little Nicky" and "The Keeper" such that New Line Cinema is liable for reverse passing off under § 43(a) of the Lanham Act. As Defendant points out, however, this Circuit has dismissed a § 43(a) claim where the court has determined that no substantial similarity exists. See Milhalek, 814 F.2d at 296 (dismissing Lanham Act claim for same lack of substantial similarity which undermined copyright claim). While Plaintiff argues that there is no inconsistency between application of the Copyright Act and the Lanham Act, this is not the relevant inquiry. Indeed, both a Lanham and Copyright claim may coexist if there is substantial similarity between the two works. Thus, because there is no substantial similarity between the works, this claim is also dismissed.
III. Preemption
Plaintiff's commercial misappropriation claim (Count II), breach of quasi contract claim (count III), misappropriation of trade secrets under Michigan and California law (count VI), breach of implied duty of good faith and fair dealing (Count VII), unfair competition/unjust enrichment (Count VIII) and interference with prospective economic advantage (Count IX) are all preempted by state law. Plaintiff even concedes in his response that Count III for breach of quasi contract and Count VIII for unfair competition/unjust enrichment are preempted based on the Sixth Circuit's holdings in Wrench v. Taco Bell Corp., 256 F.3d 446 (6th Cir. 2001) and Murray Hill v. ABC Communications, Inc., 67 F. Supp.2d 754, 762 (E.D. Mich. 1999), aff'd in part, 264 F.3d 622, 638 (6th Cir. 2001). Yet, Plaintiff argues that his other state law claims are not preempted.
Count IV for breach of quasi-contract against Mr. Hess and Mr. Apothaker has been voluntarily dismissed by Plaintiff.
Under § 301 of the Copyright Act, a state common law or statutory claim is preempted if (1) the work is within the scope of the subject matter of the copyright and (2) the rights granted under state law are equivalent to any exclusive rights within the scope of federal copyright. Wrench, 256 F.3d at 453. Plaintiff correctly maintains that if there is an "extra-element" that changes the nature of action so that it is qualitatively different from a copyright infringement claim, then there is no preemption of the state cause of action. Yet, none of Plaintiff's state law claims contain such an "extra-element."
First, with respect to Plaintiff's breach of the implied duty of good faith and fair dealing (Count VII), as Defendant points out in its reply, this claim must be dismissed because it cannot exist in the absence of an actual, valid contract. See Van Arnem Co. v. Manufacturers Hanover Leasing Corp., 776 F. Supp. 1220, 1223 (E.D. Mich. 1991). Because Plaintiff's breach of quasi-contract claim is preempted (a fact conceded by Plaintiff), then this claim fails as well. (Plaintiff does not even address this count in his response.)
Second, Plaintiff's commercial misappropriation claim (Count II) and misappropriation of trade secrets (Count IV) are also preempted. There are no "extra-elements" that would distinguish these causes of action from the exclusive rights granted by the Copyright Act. See Artie Fields Prods., Inc. v. Channel 7 of Detroit, Inc., No. 94-CV-70730, 1994 WL 559331, at * 2 (E.D. Mich. June 10, 1994) (holding that "commercial misappropriation" claim was preempted by Copyright Act because claim was "grounded solely in the copying of a plaintiff's protected expression" and was thus not "qualitatively different from a copyright infringement action"); Idema v. Dreamworks, Inc., 162 F. Supp.2d 1129, 1192 (C.D. Cal. 2001) (holding that "misappropriation" claim was preempted by Copyright Act because claim alleged misappropriation of story and characters that were within the subject matter of copyright). Plaintiff's misappropriation of trade secret claim is substantively no different than his commercial misappropriation claim — both allege that Defendant stole his protected expression of "The Keeper." Because both of these claims fall within the subject matter of the copyright, they are hence preempted.
Cases have held that a confidential or fiduciary relationship can be an "extra-element" foreclosing the preemption argument. See Artie Fields, 1994 WL 559331 at * 2 (citation omitted). Yet, Plaintiff does not argue that there was such a fiduciary relationship between the parties in the case sub judice.
Finally, Plaintiff's interference with prospective economic advantage claim (Count IX) is also preempted. See Aqua Bay Concepts, Inc. v. Grosse Pointe Board of Realtors, No. 91-CV-74819, 1992 WL 350275, at * 4 (E.D. Mich. May 7, 1992) (holding that interference with contractual relationship claim was preempted by Copyright Act because "alleged `tortious interference' rest[ed] upon [the defendants'] `act of copying and distributing plaintiff's copyrighted work — acts that are clearly contrary to the rights encompassed with Section 106 of the Copyright Act of 1976.'"; Idema, supra, 162 F. Supp.2d at 1193 (same). Plaintiff fails to distinguish these cases and instead asserts — without any support — that his tortious interference claim contains an extra element of wrongful purpose in taking of the work. Because such a wrongful purpose is already encompassed by the Copyright Act, and Plaintiff cites no authority stating otherwise, this argument is rejected.
IV. Attorney's Fees and Costs
Defendant requests that we grant it attorney's fees and costs pursuant to § 505 of the Copyright Act. This is a matter in our "equitable discretion" guided by consideration of several non-exclusive factors, including "frivolousness, motivation, objective unreasonableness and deterrence." Cross Keys Publ'g Co v. Wee, Inc., 921 F. Supp. 479, 482 (W.D. Mich. 1995) (citation omitted).
Defendant argues that the copyright claim has been utterly frivolous and objectively unreasonable from its inception, pointing out that Plaintiff had to drop the movie "Mr. Deeds" from its complaint and eventually dropped the credited screenwriters, Adam Sandler, Steven Brill, and Tim Herlihy from this litigation (after Defendants filed a motion to dismiss) and did not even serve summons on Mr. Hess and Mr. Apothaker. Defendant maintains that Plaintiff is trying to extract settlement value from New Line Cinema, the deep-pocket film studio, after dismissing the other Defendants. Furthermore, Plaintiff has failed to prosecute this case by setting a scheduling conference and refused to provide New Line with a copy of "The Keeper" — forcing it to contact the U.S. Copyright Office.
While Plaintiff has not been very cooperative and did seem to file an overbroad complaint (and then dismissed various Defendants and claims as the litigation continued), the Court does not believe Plaintiff's behavior has been so egregious as to warrant attorney's fees and costs. There is no direct evidence that Plaintiff's claims were not brought in good faith14 and, for the most, were warranted under existing law, even though they were found to be meritless in the end. Given the Act's grant of discretion and the factors that are to be balanced, the Court does not think it should exercise its discretion to award attorney's fees and costs. See e.g., Murray Hill, 264 F.3d at 639-40 (reversing district court's award of attorney fees in Copyright Act case where claims were colorable, albeit meritless).
ORDER
It is hereby ORDERED that Defendant's motion for summary judgment is GRANTED IN PART. Plaintiff's case is DISMISSED in its entirety but there is no awarding of attorney's fees and costs.