Benay v. Warner Bros. Entertainment, Inc.
95 U.S.P.Q. 2d (BNA) 1165, 2010 U.S. App. LEXIS 11707, 607 F.3d 620 (2010)
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Rule of Law:
For a copyright infringement claim to succeed, two works must be substantially similar in their protected expressive elements, not merely in their unprotectable ideas, historical facts, or scenes-a-faire. However, a state-law claim for breach of an implied-in-fact contract can be based on the use of those same unprotectable ideas if they were submitted with an expectation of compensation.
Facts:
- Between 1997 and 1999, brothers Aaron and Matthew Benay wrote a screenplay titled 'The Last Samurai'.
- The Benays' screenplay features James Gamble, a married West Point professor who travels to Japan to train the Imperial Army, seeks revenge for his son's death at the hands of a treacherous samurai leader, and ultimately triumphs and returns to America.
- On May 16, 2000, the Benays' agent, David Phillips, submitted the screenplay to Richard Solomon, an executive at Bedford Falls Productions.
- Phillips provided the screenplay with the implicit understanding that if Bedford Falls used its ideas to produce a film, the Benays would be compensated.
- Solomon informed Phillips that Bedford Falls would 'pass' on the screenplay because it already had a similar project in development.
- Subsequently, Warner Brothers and the other defendants produced and released a film, also titled 'The Last Samurai'.
- The film's protagonist is Nathan Algren, an unmarried, alcoholic mercenary who goes to Japan to train the Imperial Army, is captured by samurai, assimilates into their culture, bonds with their honorable leader, and joins them in a final battle against the army he trained.
Procedural Posture:
- Aaron and Matthew Benay filed a lawsuit against Warner Brothers Entertainment, Inc., and others in U.S. District Court.
- The Benays asserted claims including federal copyright infringement and breach of an implied-in-fact contract under California law.
- The district court (a court of first instance) granted summary judgment in favor of the Defendants on both the copyright and contract claims.
- The Benays, as appellants, appealed the district court's summary judgment ruling to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Was summary judgment for the defendants proper where the plaintiffs' copyright claim was based on similarities of unprotectable elements, and their implied-in-fact contract claim was based on the alleged use of those same unprotectable ideas?
Opinions:
Majority - William A. Fletcher, Circuit Judge
No. Summary judgment was proper on the copyright claim because the works are not substantially similar once unprotectable elements are filtered out, but it was improper on the contract claim because similarity of unprotectable ideas can be sufficient to show use under California contract law. For the copyright claim, the court applied the Ninth Circuit's objective 'extrinsic test,' comparing the articulable elements of the works while filtering out unprotectable material. The court found that any similarities between the screenplay and the film—such as the title, the historical setting of the Satsuma Rebellion, the premise of an American veteran training the Imperial Army, and stock battle scenes—were unprotectable historical facts, general ideas, or scenes-a-faire. Once these elements were disregarded, the protected elements of plot (revenge story vs. captivity narrative), characters (happily married professor vs. alcoholic loner), and theme (pro-modernization vs. nostalgic for tradition) were fundamentally different. Therefore, no reasonable juror could find substantial similarity of protected expression. For the breach of implied-in-fact contract claim, the court held that the standard is different. California contract law protects the disclosure of an idea submitted with an expectation of payment, an 'extra element' that saves the claim from preemption by federal copyright law. Unlike copyright, this claim does not require similarity of protected expression. Instead, liability can be based on the 'use' of unprotected ideas. The court found that the similarities in the basic premise, historical context, and title were substantial enough for a jury to infer that the defendants used the Benays' idea. Therefore, summary judgment was inappropriate, and the claim was remanded for a determination of whether such use actually occurred.
Analysis:
This case establishes a crucial distinction between the scope of federal copyright protection and state-law contract protection for creative ideas. It affirms that while copyright law does not protect general ideas, creators can use implied-in-fact contracts to protect those ideas during the pitching process. The decision provides a vital pathway for recovery for writers when their foundational concepts are used, even if the final product's specific expression is different enough to avoid copyright liability. This reinforces the importance of the 'pitch' as a contractual event in the entertainment industry and clarifies that a failed copyright claim does not automatically defeat a related contract claim.
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