A comparative French and U.S. law approach to scènes à faire and other nonprotectable elements in copyright law 1 - PDF

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A comparative French and U.S. law approach to scènes à faire and other nonprotectable elements in copyright law 1 Published in French in Propriétés Intellectuelles, January 2009, Issue n 30. By Winston

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A comparative French and U.S. law approach to scènes à faire and other nonprotectable elements in copyright law 1 Published in French in Propriétés Intellectuelles, January 2009, Issue n 30. By Winston Maxwell (Paris), Katherine Bolger (New York) and Thomas Zeggane (Paris), Hogan & Hartson LLP Introduction. Copyright does not protect ideas but merely their original expression. The principle is simple, but its application riddled with uncertainties. In 1930, Judge learned Hand wrote of the frontier between idea and expression : Nobody has ever been able to fix that boundary, and nobody ever can. 2 The 1930 case decided by Learned Hand involved the author of a play named Abie's Irish Rose, who sued the producer of a motion picture entitled The Cohens and The Kellys for copyright infringement on the basis of the substantial similarities between the two works. In his opinion, Learned Hand dismissed plaintiff s claims on the ground that [a] comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet. As predicted by Judge Hand in 1930, the uncertainties between idea and expression still plague practitioners today. Creators of successful dramatic or literary works are often attacked by individuals alleging that the successful work infringes their own prior (generally unsuccessful) work. Plaintiffs are able in most cases to demonstrate that they wrote an earlier treatment, script or book containing several elements similar to those found in the second successful work. French and U.S. approaches to this situation are quite similar. In the U.S., the first inquiry will be to determine whether the defendant had access to the earlier work. In France, the traditional approach skips this test. However, two recent French decisions appear to include an access test similar to that used in the U.S. After the access test, the next test consists of determining whether the similarities identified are limited to non-protectable elements or relate to elements of original expression of the earlier work. Next, the mere existence of similarities with copyrightable elements of the prior work is not sufficient, these similarities must be substantial. The author of the second work may also provide evidence that the work was created independently and that the similarities with the earlier work are purely fortuitous. Under both French and U.S. law, the substantial similarity tests give room for subjectivity, which in turn creates uncertainties. More than 75 years after Judge Hand s decision, the line of demarcation between idea and expression remains difficult to draw, in both France and the U.S. Freedom of speech. Copyright is a restriction of free speech. While not always expressly acknowledged in the case law, the tension between copyright and freedom of speech affects copyright analysis in three ways : First, in assessing the protectability of the elements reused in the second work. The U.S. concept of scènes à faire and its equivalent in French law ( the common heritage of literature, banalités, in the air of the times ) strike a balance between freedom of speech and copyright 3. 1 The original French version of this article appeared in Propriétés Intellectuelles, n 30, January Nichols v. Universal Pictures Corporation, 45 F.2d 119 (2 nd Cir. 1930). 3 See, Eldred v. Ashcroft, 537 U.S. 186, 211 (2003), and the idea of built-in safeguards in copyright law such as the idea-expression dichotomy or the fair use exception. The Supreme Court already stated that copyright was the engine of free expression. See, Harper & Row Publishers, Inc. v. Nation Enterprises, 47 U.S. 539 (1985). 1 Second, freedom of speech may affect the assessment necessarily subjective of the socalled similarities. Although copyright infringement is principally based on the similarities as opposed to the differences between two works, French and U.S. judges may take into account the transformative nature of the second work and decide that, because of significant creative changes (new characters, new plots, different tone and overall atmosphere), the similarities are not sufficient to warrant a finding of copyright infringement. Finally, freedom of expression is part of the exception of fair use under U.S. law and its French equivalent (article L of the Intellectual Property Code). Proposed analytical model. For the purpose of comparing French and U.S. case law, we refer to the following analytical model : 2 PROPOSED FLOWCHART FOR ANALYZING COPYRIGHT INFRINGEMENT UNDER U.S. AND FRENCH LAW A - Access to the first work? NO YES UNDERLYING TENSION BETWEEN COPYRIGHT AND FREEDOM OF SPEECH B - Elements copied = non-protectable ideas, scènes à faire, banalités, dans l air du temps? NO C - Substantial similarities? Total concept and feel? YES D - Exceptions (fair use, parody, etc.)? E - Independent creation? Fortuitous encounter? YES NO YES YES N O I N F R I N G E M E N T NO INFRINGEMENT 3 French and U.S. decisions finding no copyright infringement usually rely upon a combination of several factors. In the U.S., the absence of access (block A in the flowchart) combined with evidence of independent creation (block E ) and the fact that similarities are limited to non-protectable elements flowing from the underlying ideas (block B ) may be used as cumulative reasons why infringement does not exist. In France, decisions tend to focus on blocks B, C, and E, although the access test (block A ) has been taken into account in two recent decisions. In this regard, U.S. and French analytical methods seem to converge. The fair use exception and its equivalent in France (block D ) are routinely claimed but, at least in the cases that we reviewed, rarely recognized. Specific examples. The Wind Done Gone case 4 in the U.S. and the La Bicyclette Bleue case 5 in France are good illustrations of the influence of freedom of speech on how French and U.S. courts decide copyright infringement cases. Both cases related to a new treatment of Margaret Mitchell s Gone With The Wind. In The Wind Done Gone case (hereinafter TWDG ), the author Alice Randall retold the story of Gone With The Wind (hereinafter GWTW ) from the viewpoint of a slave. Randall and her publisher took the position that the second work was not substantially similar to Margaret Mitchell s novel owing to the transformative changes made by Randall 6. As an additional defense, Randall and her publisher claimed that notwithstanding any similarity that may exist, the second work was a fair use of GWTW. On the first defense (no substantial similarity), the court concluded that several copyrightable elements from GWTW were used by the author of TWDG, in particular the plot, the characters and their relationships. The court compared only the similarities between the two works and not their differences, before concluding that the similarities were substantial enough to constitute potential infringement. However, the court held that TWDG was a fair use because of the highly transformative use of the protected elements from GWTW and because of the purpose of the work, i.e. a critique of the depiction of slavery and of the relationships between blacks and whites during Civil War as presented in GWTW. The transformative nature of TWDG lessened the significance of its commercial exploitation 7. The Court of Appeals emphasized the importance of freedom of speech in the application of copyright law principles, and concluded that TWDG constituted a parody within the ambit of the U.S. fair use exception. The parody qualification was not self-evident. TWDG resembles a social commentary or a satire rather than a parody 8. The U.S. fair use exception is quite vague when compared to French exceptions to copyright that are listed in article L of the French Intellectual Property Code 9. The U.S. 4 Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11 th Cir. 2001). 5 Paris, November 21, 1990, Dalloz 1991, p. 85, note Pierre-Yves Gautier ; Civ. 1ère, February 4, 1992, Dalloz 1992, p. 182, note Pierre-Yves Gautier ; Versailles, December 15, 1993, Dalloz 1994, p. 132, note Pierre-Yves Gautier. 6 For changes deemed not transformative enough, see, Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997). In this case, the appropriation of elements of Dr. Seuss The Cat In The Hat in a book relating the O.J. Simpson proceedings. 7 See also, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994) regarding the use by a Rap music band of elements of Roy Orbinson et William Dees Oh, Pretty Woman. 8 For a similar discussion on terminology in French copyright law, see, Pierre-Yves Gautier, Propriété littéraire et artistique, 6 ème édition, n 368, where the author takes position in favor of the generic use of the term parody in all instances. 9 So much so that the fair use issue has been characterized as the most troublesome [theory] in the whole law of Copyright. See, Acuff-Rose Music, Inc. v. Campbell, 972 F.2d 1429, 1439 (6 th Cir. 1992) (Nelson, J., dissenting). 4 exception tolerates any fair use of a work for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. The factors to be considered when assessing whether a certain use is a fair use are: (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. Alice Randall s work, TWDG, overtly refers to the original story of GWTW to criticize Margaret Mitchell s romantic, idealized portrait of the antebellum South during and after the Civil War. The court held that the exception of fair use was applicable because the second work was, in the court s view, a parody. The court applied block D of our flowchart. In the La Bicyclette Bleue case, the Court of Appeals decided on remand that Régine Déforges novel did not infringe Margaret Mitchell s novel, not because it was a parody, but because the similarities between the two works were not substantial enough, i.e., the similarities did not pass the block C test of the flowchart. La Bicyclette Bleu borrowed several themes from Gone With The Wind, telling a similar story in a World War II setting. La Bicyclette Bleue is not a critique or a parody of GWTW but rather a new story with new characters within the general plot framework of GWTW. The author of La Bicyclette Bleu admitted that the initial similarities were deliberate, and contributed to her playful intent to create an amused complicity with readers. In both TWDG and La Bicyclette Bleue cases, judges sided for freedom of expression, although they used different rationales to reach the outcome: in TWDG case, the fair use exception (block D ); in the La Bicyclette Bleue case, the absence of substantial similarities (block C ). However, in both cases the judges were sensitive to the fact that the works significantly departed from the earlier works. The approach of the UK Court of Appeals in the Da Vinci Code case 10 is similar to that of the Versailles Court of Appeals in La Bicyclette Bleue: Dan Brown s book Da Vinci Code copied certain original themes developed in an earlier work. However, the themes that were copied represented a combination of historical events, theories and suppositions which were not protectable as such. As a consequence, the court held that Dan Brown did not copy a substantial part of the earlier work and therefore committed no copyright infringement. The Da Vinci Code case, which may also be compared to the Amistad case in the U.S. 11, is a good illustration of block B and C of our flowchart. Some outcomes may seem unfair : a children s book told the story of an island used as a dinosaur zoo. The island had a nursery for dinosaur eggs, group excursions in safari outfits, electrical fences that are part of a sophisticated security system that inevitably malfunctions leaving a child unprotected amidst dinosaurs. The author of these children s books believed that Michael Crichton s novel Jurassic Park and its motion picture adaptation by Steven Spielberg infringed his copyrights. The Court of Appeals for the Second Circuit dismissed plaintiff s claims based on blocks B and C of our flowchart 12 : Although there are several similarities between Jurassic Park and the children s books, the elements that were copied were not protectable because they constituted scènes à faire, i.e. situations that flow naturally from the underlying idea of a dinosaur zoo. The use of the French idiom scènes à faire in U.S. copyright law amuses French lawyers because the term is basically meaningless in French. In English, scènes à faire means themes and concepts that flow predictably from [an] idea 13 or 10 Baigent v Random House, [2007] EWCA Civ Barbara Chase-Riboud v. Dreamworks, Inc., CV ABC (C.D. Cal. 1997). 12 Williams v. Crichton, 84 F.3d 581 (2 nd Cir. 1996). 13 Hogan v. DC Comics, 48 F Supp 2d 298, 311 (S.D.N.Y. 1999). 5 incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic. 14 The concept of a dinosaur zoo is not protectable under copyright law because it is just an idea. According to the court, putting the park on an island ( Where else would it be? ), the nursery for dinosaur eggs, and the defective security system are all scènes à faire that logically flow from the underlying idea of a zoo for dinosaurs. These scènes à faire are no more protected that the underlying idea itself. In addition, the court held that the works as a whole did not present sufficient similarities (block C of the flowchart) because the total concept and feel of the two works, and their overall character, differ. Thus, even if the assessment of copyright infringement is, in principle, based on similarities and not differences, differences between the two works play a role in the subjective appraisal of the significance and the extent of the similarities. In another case, plaintiffs wrote a story, based on their activities in real life as divination artists, in which an artist has the ability to paint the future. The artist draws a picture predicting that two planes will destroy the World Trade Center, and tries to warn people of the imminent danger. A similar scene was used in the TV series Heroes. According to the Southern District Court of New York, there was no infringement because the idea of a divination artist who has the ability to paint the future is not copyrightable in itself 15. The fact that this artist predicts apocalyptic explosions in Manhattan is not original, especially following the September 11 terrorist attacks; that the artist tries to prevent these events from happening is a predictable scène à faire that flows directly from the underlying idea. In an approach similar to that used in the Jurassic Park case, the court held that the overall concept and feel of the two works were entirely different and that the similarities were not substantial enough to warrant a finding of infringement. In both cases, the judges rationale rested upon blocks B and C of the flowchart. French cases. In France, an author wrote a short narrative about a patient stuck in his hospital bed and who had to rely on his roommate to describe events he saw happening in the outside world. At the end of the story, we discover that the window used by the roommate had no view of the outside world and that the roommate invented the stories. This idea was also used in a short film, but the Paris Court of Appeals held that the idea was a nonprotectable and that, in addition, the idea had already been used in previous works 16. According to the court, the similarities between the two works did not go beyond the underlying idea (block B of the flowchart). Moreover, the works differ significantly in their tone and spirit (block C ). French judges use the term banalités to designate situations that naturally flow from the underlying idea (the equivalent of scenes à faire). French Professor Pierre-Yves Gautier cites in his copyright treatise a 1909 lawsuit brought by the famous playwright Courteline who accused another author of copying scenes from Courteline s story. The French court dismissed Courteline s claims, concluding that the scenes that were copied, involving a love triangle, belonged to theater s common heritage 17. Although the term scènes à faire is only used by U.S. courts, the same concept has existed in French case law at least since In a more recent case involving the picture The Professional, the Paris Court of Appeals held that the similarities between a screenplay entitled A Broken Childhood and the motion picture The Professional were not substantial enough 18. According to the court, the theme of a child disrupting the habits of a lonely and emotionally detached adult who 14 Alexander v. Haley, 460 F.Supp. 40 (S.D.N.Y.1978). 15 Mallery v. NBC Universal, Inc., 2007 WL (S.D.N.Y. 2007). 16 Paris, February 21, 1996, Juris-Data n Pierre-Yves Gautier, Propriété littéraire et artistique, 6 ème édition, n 41, p. 59, quoting Paris, May 12, 1909, DP , 1 ère esp., note Claro, S., , note Taillefer. 18 Paris, June 27, 2001, RIDA, April 2002, p eventually gets attached to the child is in itself trivial, and commonly used in literature and film. This theme cannot be subject to any appropriation beyond the specific development carried out and the creative input which conferred to this work its originality and defines the limits of the protection that the author may claim. The Court applied block B of the flowchart. TV formats. TV formats 19 deliver a smooth, well-tested mechanism allowing a reproducible or even guaranteed success. 20 Because of their success, TV formats generate lawsuits on both sides of the Atlantic. One of the first U.S. cases to offer a detailed approach of the copyrightability of non-scripted TV shows involved two television networks, CBS and ABC 21. CBS claimed that ABC infringed CBS s copyright to the TV show Survivor 22 with ABC s own I m a Celebrity Get Me Out of Here! 23 (hereinafter Celebrity ). After stating that the allegedly infringing TV show was a combination of generic elements, the Southern District Court of New York held that the works ought to be compared with regard to their total concept and feel, theme, characters, plot, sequence, pace and setting. 24 The court compared the unalterable seriousness of Survivor to the humoristic tone of I m A Celebrity. Then, the court went on to compare the production techniques of the works, in particular the lush, artful photography and painstaking etiquette of Survivor versus the technique used in Celebrity, which was closer to the home video look creating a drastically different look and feel. The court examined the characters as if they were fictional characters linked to a particular storyline. The court contrasted the characters motivations, Survivor generating cut-throat competition while the candidates of Celebrity are mainly concerned about their public image and reputation without any competitive spirit. Analyzing the tests faced by the candidates, the court observed that the tests in Survivor were mandatory and physically difficult, noting in particular that [i]mmunity challenges are particularly serious, because a life or death decision is made as a result of the immunity challenge. On the contrary, the tests in Celebrity were voluntary and essentially meaningless and silly or gross. Finally, the court examined in more details its favorite scene, the worm eating scene, which was regarded as a scène à faire. 25 The Court considered the presentation of the worm seq
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