In March 2020, days before safer-at-home orders sent millions of Americans into remote work, the Ninth Circuit published a copyright opinion that may have quietly resolved an issue that has simmered in the circuit for years.
The question relates to when, if ever, a district court can dismiss a copyright claim at the pleading stage on the ground that similarities between two works do not involve protected expression.
For future copyright cases, the opinion in Daniels v. The Walt Disney Co. may ease what appeared to be a growing discomfort in the Ninth Circuit with Rule 12(b)(6) dismissals in copyright cases involving literary works.
The Daniels ruling increases the likelihood that in future cases, Ninth Circuit panels will treat literary works similarly to visual works and be open to 12(b)(6) dismissals when similarities between two works are limited to elements that are not protectable.
For defendants, Daniels strengthens the litigation tactic of pointing to prior uses of abstract ideas or conventions as a basis for showing lack of originality in a plaintiff’s work.
For plaintiffs, Daniels points to the importance of identifying elements in a defendant’s work that correspond to creative elements in the plaintiff’s work that are genuinely original.
Moodsters v. Disney’s Inside Out
Daniels involved a claim by the creator of the Moodsters characters that the Disney film “Inside Out” infringed those characters by associating emotions with colors in a manner that was similar to the Moodsters. The district court had granted a motion to dismiss an amended complaint under Rule 12(b)(6), concluding that the similarities between the characters were not protected.
Two unpublished Ninth Circuit opinions issued in the two years prior to Daniels had reversed district court orders dismissing copyright complaints at the pleading stage. Although unpublished, the decisions in Hall v. Swift and Astor-White v. Strong received widespread attention because they both involved reversals of district court dismissals in cases involving prominent works.
Hall involved a song by Taylor Swift, and Astor-White involved the TV show “Empire.” These decisions raised concerns about the increased costs of defending against even weak claims of copyright infringement.
Hall and Astor-White were hard to reconcile with a 2018 published Ninth Circuit opinion, which affirmed a Rule 12(b)(6) dismissal that was based on lack of substantial similarity. The plaintiff (Jacobus Rentmeester) alleged Nike infringed his copyright in a photograph he took of Michael Jordan by commissioning similar images for use in an advertisement and logo.
The plaintiff’s photograph depicts Jordan leaping toward a basketball hoop with a basketball raised above his head in his left hand, with his legs extended in a pose unnatural for a basketball player (similar to a ballet position). Nike’s photo and logo showed a basketball player in the same position, from a similar angle. The background of the Nike photo shows Chicago’s skyline, rather than the grassy knoll in the plaintiff’s photograph.
In a split decision, the Ninth Circuit panel majority agreed with the district court’s conclusion that with the accused and allegedly infringed works before the court, it was possible to resolve the question as a matter of law. Without the aid of expert testimony, the court identified which elements and combinations of elements in the photos were not protectable and filtered out those elements. Judge Owens would have remanded as to the photo (but not the logo) for further development of the facts.
Following Rentmeester, one might have thought that the matter was resolved and that 12(b)(6) dismissals were now approved in the Ninth Circuit where similarities between two works do not involve protected expression.
The Shape of Water Raises Uncertainty
New uncertainty arose, however in December 2019, when another panel heard a case involving the movie “The Shape of Water.” Both the movie and the allegedly infringed play, Let Me Hear You Whisper, by Paul Zindel, involve a non-human character’s attempt to escape from confinement and testing in a research lab, assisted by a cleaning staff worker and a hamper.
No opinion has yet issued, but Judge Wardlaw appeared to be searching for how to formulate a new rule to express a higher standard for 12(b)(6) dismissals in cases involving literary works, rather than visual works like photographs. From the bench she described such dismissals not as standard operating procedure, but as “hubris.”
Enter Daniels, a Ninth Circuit published decision that approves the granting of a 12(b)(6) dismissal in a case involving allegations that characters in a literary work infringed characters in a treatment. There, the Ninth Circuit panel, in the context of analyzing the protectability of characters, engaged in a dissection and analysis of traits and characters that was similar to the approach courts have used in granting or affirming 12(b)(6) dismissals in other contexts.
As the court explained, the case asked whether “certain anthropomorphized characters representing human emotions qualify for copyright protection.” The association of a color with an emotion alone, the court reasoned, is an unprotectible idea frequently used in other works and as such is not protected expression, and the characters overall were “lightly sketched.”
Moreover, the traits, attributes and physical qualities of the characters varied over time and were not so distinctive and consistent as to warrant protection for these characters. Because the Moodsters characters were not protectible, the Disney movie, Inside Out, did not infringe, although it, too, involved anthropomorphized emotions represented with different colors.
Whether the Ninth Circuit in Zindel will distinguish Daniels on the ground that claims involving literary characters should be handled differently than claims focused on infringement of other elements of literary works remains to be seen.
What can be said is that making such a fine distinction in the face of both Daniels and Rentmeester and decisions by other circuits to allow for dismissal of meritless claims at the pleadings stage will not be very persuasive. At the end of the day, when two works are before the court, and any similarities are too general or abstract to give rise to a claim, the case should be dismissed.
This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.
Laura W. Brill is a founding partner in Kendall Brill & Kelly LLP, a Los Angeles based litigation boutique, and a certified appellate specialist. A former law clerk to Justice Ruth Bader Ginsburg, she speaks and writes frequently on copyright law and other legal issues.