Whereas the low threshold of originality as opposed to novelty had already been clearly established by this court (See Alfred Bell & Co. ν Catalda Fine Arts, Inc. 191 F.2d 99, 2d Circ. 1951), under the 1976 Copyright Act it is now explicit in the statute that copyright subsists in ‘original works of authorship,’ and it is the task of this court to determine whether the issue of novelty or originality applies in the case before us.
In an appeal bearing certain striking resemblances to the case at bar, Judge Learned Hand disputed the issue of novelty more than a generation ago in observing at the outset that ‘[w]e are to remember that it makes no difference how far the play was anticipated by works in the public demesne which the plaintiffs did not use. The defendants appear not to recognize this, for they have filled the record with earlier instances of the same dramatic instances and devices, as though, like a patent, a copyrighted work must be not only original, but new. That is not however the law as is obvious in the case of maps or compendia, where later works will necessarily be anticipated. At times, in discussing how much of the substance of a play the copyright protects, courts have indeed used language which seems to give countenance to the notion that, if a plot were old, it could not be copyrighted.’ Sheldon et al. v. Metro-Goldwyn Pictures Corp. et al., 81 F.2d 49, quoting London v. Biograph Co. (C.C.A.) 231 F. 696. Defendant-appellees in the instant case have pursued a similar course, and the district court has joined with their pursuit, conjuring up once more this spectre of novelty in arguments relying heavily on citations from a more recent case in which the judge determined this to be the ‘sole issue’ before the court in granting defendants’ motion for summary judgment, and affirmed in the review by the appeals court limiting its decision to whether there was ‘no genuine issue as to any material fact’ entitling defendants to ‘judgment as a matter of law.’ Fed. R. Civ. P.56(c). Murray v. National Broadcasting Co. Inc., 671 F. Supp. 236 (S.D. N.Y. 1987), quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). In so arguing, defendants in the case before us have sought and found refuge in a decision embracing property rights in an idea, thus narrowing the issue to those mean constraints which the district court had then proceeded to analyze in light of the New York Court of Appeals decision in Downey v. General Foods Corp., 31 N.Y.2d 56, 334 N.Y.S.2d 874, 286 N.E.2d 257 (1972) Affirmed (1988) establishing the general proposition that ‘[l]ack of novelty in an idea is fatal to any cause of action for its unlawful use’ therewith granting defendants’ motion for summary judgment. In tying the case at bar to the Procrustean bed of Murray as refined by further pruning at the hands of this court, plaintiff is disabled from pursuing the triable issue of infringement of a copyrighted work wherein novelty rightly construed is a contributing but not the controlling factor and where, for that matter, we may take notice of Pratt, C.J. dissenting in Murray ‘convinced that the novelty issue in this case presents a factual question subject to further discovery and ultimate scrutiny by a trier of fact.’
In deciding Nichols v. Universal Pictures Corporation (45 F.2d at 121) Judge Hand stated ‘[I]t is of course essential to any protection of literary property, whether at common law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations . . . When plays are concerned, the plagiarist may excise a separate scene (citations omitted); or he may appropriate part of the dialogue (citation omitted). Then the question is whether the part so taken is “substantial,” and therefore not a “fair use” of the copyrighted work; it is the same question as arises in the case of any other copyrighted work. (Citations omitted.) But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome.’ Further, in Murray, this court has conceded ‘that even novel and original ideas to a greater or lesser extent combine elements that are themselves not novel. Originality does not exist in a vacuum.’ And as stated in Edwards & Deutsch Lithographing Co. v. Boorman, 7th Circ., 15 F.2d 35, 36, ‘The materials used are all old and in the public domain, but the selection, the ordering and arrangement, are new and useful, and copyrightable. In deciding the question of infringements, the first and most obvious thing to do is to compare the productions themselves. The copyrightable feature of appellant’s production being a particular plan, arrangement and combination of materials, the identity of such plan, arrangement and combination of similar materials, found in appellee’s production, not only suggests, but establishes, the claim of copying.’ See Universal Pictures Co. v Harold Lloyd Corporation 162 F.2d 354.
The defendants took for their mise en scene the same locale, the same two fragmented families contrasting privilege and penury, the same leading roles and the same protagonist’s relationships with them. Both Thomas and Randal are fueled by indignation; both escape their humiliating circumstances through marriage to the plantation heiress next door, whose father is a Confederate major and whose brother takes their place at the battlefront unbeknownst to them; both travel north on the same mission and send substitutes from the mines up in their place, to the same fate and in the same battle; finally, both are saddled by a bleak embittered mother who holds the key to their family injustice in the form of the intestate uncle. The differences are not of character but of dimensions, convenience or mere disguise; thus Thomas is an ambitious young man of intellectual leanings caught at cross purposes and fully aware of the ethical fine points at stake in his demand for justice, whereas Randal is cast in a simpler mould, reflecting the vacant stare of the motion picture audience in its warm acquaintance with greed undiluted by any exercise of the intellect let alone the bewildering thicket of Socratic dialogue. Where the play has in mind to edify, the picture sets out to entertain; thus Giulielma, Thomas’ touching and desolate bride, finds her tempestuous full bosomed counterpart on the screen composed to arouse those appetites that will find their vicarious reward in the rape scene. Similarly, the sympathetic stage portrait of the Major as a genteel if self serving Southern aristocrat not unfamiliar in the literature, becomes that of a scheming rural drunk familiar from the small screen of television, and his son a mean figure of weakness and spite who is portrayed on the stage as a complex mixture of thwarted and divided love and loyalties. Even the part of Mr Bagby, a study in the business as usual corruption that ushered in Reconstruction and flourishes among us today as the beau ideal, is taken by a comic Italian stereotype reflecting, perhaps, no more than the mirth provoking possibilities provided by each successive wave of immigration, where were the story set in our own time his name would be Jimenez. Only the mother remains the same consistently unpleasant presence from one incarnation to the next, though her message delivered at the opening of the play does not come until later in the picture with its full impact when the two have parted company altogether. The Negro boy at her knee in the play has all but disappeared in the picture, there being no need to explore Rousseau’s views on freedom; and Mr Kane of the play is entirely absent from the picture where Crito would be as unhappy a stranger as King Tut.
The main action of the play commences well after that of the picture, with the hero’s return from battle to the news of his inheritance. Rather than marking a difference however, this draws them the closer, since the play’s opening dialogue summing up all that has gone before now reads like the scenario written for and played out in the picture. From the mother’s bleak recounting of the event, we behold on the screen the hero driving their shabby equipage up the plantation drive ‘as if he owned the place’ only to be sent on his way by a disdainful black to the dilapidated farm, where their struggle against adversity is depicted in the ensuing montage as a long pantomime of privation with musical flourishes unaided by the spoken word. The first voice we hear is that of the ravishing heiress next door, taking him by surprise while out hunting though from her demeanor and subsequent actions we gather that she is not. In calculated contrast to Thomas’ poetic recounting of this scene in the play, where his humiliation out hunting food for the table confronted
the girl’s wayward loneliness, the man on the screen turns the tanned and perspiring badges of his low estate to advantage bringing her down from her arrogant seat on a pawing stallion to be found in short order undoing his overalls and, in the phrase that has caught currency from its high Joycean literary pedigree, ‘making a man of him.’ Following a lavish wedding and his installation at Cross Creek with his bride’s unsavoury relations, the clouds of war loom over the happy couple, preparing us for the full scale screen spectacle of battle at Ball’s Bluff
We may note that at this point in the picture the main action of the play has not even begun, and nothing has been offered by defendants as evidence taken from the public domain, yet we need only come this far in tracking the picture to the play to arouse our doubts regarding ‘the particular plan, arrangement and combination of materials’ in defendants’ product in the light of Nutt v. National Institute Incorporated for the Improvement of Memory, 2d Circ., 31 F.2d 236, 238 where the court observed, ‘[c]opying is not confined to a literal representation but includes various modes in which the matter of any publication may be adopted, imitated or transferred with more or less colourable alteration.’ The matter of dialogue versus action portrayed, or as alleged in the instant case employed as a blueprint for such portrayal, has enjoyed many variations in infringement actions, quoting the author’s description of the infringing scene in Chappell & Co. v. Fields, 2d Circ., 210 F. 864 where ‘[I]η the plaintiff’s play the idea that B was deliberately bound to the track with the intention of having him killed by the train was conveyed by the joint effect of the language spoken and movements performed in accordance with the written directions; while in the defendant’s play the same idea was conveyed solely by the language uttered. The action, the narrative, the dramatic effect, the impression created and the series of events in the two scenes were identical.’ Thus ‘[w]e have often decided that a play may be pirated without using the dialogue. (Sheldon v. Metro-Goldwyn Pictures, supra, citations omitted.) Were it not so, there could be no piracy of a pantomime, where there cannot be any dialogue; yet nobody would deny to pantomime the name of drama. Speech is only a small part of a dramatists’ means of expression; he draws on all the arts and compounds his play from words and gestures and scenery and costume and from the very looks of the actors themselves.’ Yet even as here quoting Judge Hand in their defense, appellees rather strengthen the case for the plaintiff as they have done elsewhere ‘by setting out dissimilarities, changes, omissions, additions, and variations . . . different characters, different dialogues, and different costumes which were used to effect a different purpose. Evidence of these differences is relevant upon the question of infringement, but if such differences are shown to exist, the question remains for the trier of fact to decide the issue.’ Pellegrini v. Allegnini, D.C., 2 F.2d 610. Where a grant of summary judgment may be precluded by evidence of substantial differences between two works because such evidence would demand a trial on the issue of substantial similarity, should we follow the procedure of the court below assuming copying we must determine whether there are differences which are not extensive enough to show that there is no substantial similarity between the play and the picture as a matter of law. Thus in Fleischer Studios, Inc. v. Ralph A. Freunalich, Inc., 2d Circ., 73 F.2d 276, 278, cert. denied 294 U.S. 717, 55 S.Ct. 516, 79 L.Ed. 1250, the court found the test of infringement to be whether the work is ‘recognizable by an ordinary observer as having been taken from the copyrighted source. Such is an infringement . . . Slight difference and variations will not serve as a defense.’ As in the case at bar, ‘[s]urely the sequence of these details is pro tanto the very web of the author’s dramatic expression; and copying them is not “fair use . . . ” Again these details in the same sequence embody more than the “ideas” of the play; they are its very raiment.’ And see Chicago Record-Herald C. v. Tribune Association, 7th Circ., 275 F. 797, 799, in which it is said that the unauthorized use, copy or appropriation is not to be neutralized on the plea that ‘it is such a little one.’
If this de minimis defense cannot prevail, then neither can defendants’ copious recital of omissions, variations and incidents foreign to both the play and the public domain. The simple handshake transformed on the screen to a heaving ejaculatory introduction between the leading couple is after all classic, in the vulgar sense, ‘Hollywood’ usage of a property assuming of course that the rights to the context of the handshake have first been secured, just as the picture’s entirely gratuitous rape scene is an excusatory contrivance for the obligatory nudity presumably contemplated in the female star’s seven figure contract. ‘Incident springs out of character, and having occurred it alters that character,’ writes the English novelist E M Forster, and ‘characters, to be real, ought to run smoothly, but a plot ought to cause surprise.’ Thus in the play we see plot emerging from character, whereas in the picture the characters are mere puppets of the plot, and defendants will prosper no better with reciting prolonged instances of the play’s dialogue which do not occur in the picture, than in pointing the accusing finger at plaintiff for his cavalier lifting of dialogue and even whole scenes from the works of Plato, for as elucidated by Judge Hand in Sheldon v. Metro-Goldwyn Pictures, supra: ‘Borrowed the work must indeed not be, for a plagiarist is not himself pro tanto an “author”; but if by some magic a man who had never known it were to compose anew Keats’s Ode on a Grecian Urn, he would be an “author,” and, if he copyrighted it, others might not copy that poem, though they might of course copy Keats’s. (Citations omitted.) True, much of the picture owes nothing to the play . . . but that is entirely immaterial; it is enough that substantial parts were lifted; no plagiarist can excuse the wrong by showing how much of his work he did not pirate. We cannot avoid the conviction that, if the picture was not an infringement of the play, there can be none short of taking the dialogue.’
It becomes clear beyond peradventure that the district court abused its discretion in granting defendants’ motion for summary judgment dismissing a complaint containing triable issues of fact including that of novelty, to which the issue was largely reduced, relying heavily on Murray v. National Broadcasting Company, supra, as argued in defendants’ representations of ‘fair use’ making no finding in the instant case on whether they actually used the play or not. In this connection we again find Pratt C.J., dissenting in Murray, persuasive in his observation that ‘there is no evidence indicating NBC knew anything of the program idea until Murray submitted it’ and ‘(even though plaintiff’s idea was in public domain, no evidence that defendant knew about or would have discovered the idea except through plaintiff’s proposal; hence the “idea was novel” as far as defendant was concerned.’
Plaintiff’s Fourth, Fifth, Sixth and Seventh Causes of Action relate to defendants’ alleged infringement of plaintiff’s copyrighted property. Plaintiff’s Fourth Cause of Action is for unjust enrichment. In his Fifth Cause of Action plaintiff claims fraud and conspiracy between defendants Erebus and Kiester in the non-performance clause of their contract. Plaintiff’s Sixth Cause of Action charges naked theft of characters and sequences to be found nowhere in material presented in discovery as from the public domain. In his Seventh Cause of Action which is against Kiester and his head writer Knize only, plaintiff claims misrepresentation, deceit and fraudulent conduct in the misappropriation and conversion of copyrighted material on deposit at certain public institutions, and of material obtained under false pretenses from plaintiff some years earlier. Plaintiff’s Eighth Cause of Action is directed against the writing team assembled by the producer holding them liable as joint tort feasors in this action.
Plaintiff’s First Cause of Action claiming his original and prevailing proprietary interest in the main character of the story by virtue of its depiction of his own grandfather, whom he had indeed known as a small child and some of whose papers and effects remain in his possession, was dismissed by the trial judge holding that such grounds even if justiciable could not survive the entry of the s
tory itself into the public domain through turn of the century press clippings, subsequent publication in Western North Carolina Sketches and elsewhere. We concur. In dismissing plaintiff’s Second Cause of Action for breach of an implied contract, the judge cites Murray v. National Broadcasting Co., supra, quoting Miller v. Schloss, 218 N.Y. 400, 406, 407, 113 N.E. 337 (1916) stating that ‘[a] contract cannot be implied in fact where the facts are inconsistent with its existence; or against the declaration of the party to be charged . . . The assent of the person to be charged is necessary and unless he has conducted himself in such a manner that his assent may fairly be inferred he has not contracted,’ and, as in Murray, ‘[t]he facts in this case do not support a finding of an intent to contract. On the contrary, the complaint alleges NBC’s express rejection of plaintiff’s proposal,’ in this case the infringed work. Again we concur, as we do also with the dismissal of plaintiff’s Third Cause of Action alleging fraud on the part of Kiester in his repeated changes of name to conceal his original access to the play under his original identity, since we find in defendant’s Third Affirmative Defense of these name changes ‘for professional reasons’ expressed in his own indelicate choice of words ‘I’m a Jew the minute I step off the plane in L.A.’ to carry with them the vulgar ring of truth.
The Ninth Cause of Action contains the charges ‘that the fraudulent conduct on the part of the defendants as herein alleged was willful, wanton, malicious and in utter disregard of the rights of the plaintiff causing him mental and professional distress and that as a result he is entitled to compensatory and treble or punitive damages, an accounting, a constructive trust for plaintiff’s benefit on all profits and gross revenues from The Blood in the Red White and Blue, an injunction stopping its showing unless and until he is credited with his originative role in its creation, interest, costs and reasonable attorney’s fees.’ Responding to plaintiff’s charge of unjust enrichment at the expense of the possibility of the sale or production of his play elsewhere, defendant has claimed in oral argument that plaintiff has received such an offer since filing his complaint, but absent clear evidence to this effect we must dismiss defendant’s claim as hearsay. That it is a ‘unique, artistic property’ there can be no doubt, since notwithstanding and despite the district court’s dismissal rejecting plaintiff’s claims on these grounds, it is so described in the remedies section of the development agreement drawn between Erebus Entertainment Inc. and producer director Constantine Kiester, defendants, giving Kiester the right to prevent the loss of this ‘unique, artistic property’ making certain that if his relationship with Erebus faltered this novel idea and property would be protected from disclosure. That its bare skeleton exists in the public domain may be granted, but only in the face of the persuasive argument that but for plaintiff’s submission it is hugely unlikely that defendants would have come upon it there in the form of newspaper accounts appearing in the Gastonia Tribune, Gastonia, North Carolina, on June 4 and July 2, 1903, and January 14, 1904, and the Rutherfordton Sun for June 4, 1903, or the gist of these accounts gathered in the slim locally published Western North Carolina Sketches a half century ago. Yet even assuming this vast unlikelihood to have taken place, and whatever defendants may have applied to their purpose from the various papers and letters on file at a university library, where again plaintiff established his copyright, no evidence has been presented of the bleak mother figure common to both the play and the picture appearing in these confines of the public domain; nor of an intestate uncle (the original of the protagonist inherited from his wealthy grandfather); nor of the cheek by jowl wretched farmhouse with the extravagant plantation; nor of its proprietary major; nor its heiress wife bawdy or otherwise; nor a conniving brother in law; nor even a runaway slave; nor finally a scheming Irish figure of fun or his Italian counterpart; stereotypical as these roles may be, to find their corresponding parts in ‘such plan, arrangement and combination of similar materials’ coincidental taxes credulity beyond any imaginable bounds. Thus where defendant-appellees urge the defense of ‘public domain’ claiming that all material in that category may be used repeatedly without charge of infringement, that claim is limited by the court in Fred Fisher, Inc. v. Dillingham, D.C., 298 F. 145, 146, 150 as follows: ‘Any subsequent person is, of course, free to use all works in the public domain as sources for his compositions. No later work though original, can take that from him. But there is no reason in justice or law why he should not be compelled to resort to the earlier works themselves, or why he should be free to use the composition of another, who himself has not borrowed. If he claims the rights of the public, let him use them; he picks the brains of the copyright owner as much whether his original composition be old or new. The defendant’s concern lest the public should be shut off from the use of works in the public domain is therefore, illusory; no one suggests it That domain is open to all who tread it; not to those who invade the closes of others.’