This post discusses what by all rights should be the most exciting case ever heard by any court anywhere. One of the plaintiffs is Darth Vader, and the defendant is none other than the most powerful entity in this solar system, the United States of America…! Okay, no, that isn’t quite true. Neither part of it. One of the plaintiffs is Hayden Christensen, the actor who played Anakin Skywalker (and, for about three minutes, Darth Vader) in two of the Star Wars prequels… and the defendant is the USA network (or, rather, Universal Television Network, Inc., of which USA Network is a division). In fact, in complete contradiction to what I touted at the outset, Forest Park Pictures v. Universal Television Network, Inc. is possibly the least sexy copyright decision of all time. It barely has any copyright law in it! So I’m challenging myself to find something interesting about the 23-page June 26, 2012, decision of the United States Court of Appeals for the Second Circuit—as I write about it. At issue was whether the plaintiffs’ breach-of-contract action was preempted by the Copyright Act. If you’re still awake, let’s begin.
Circuit Judge John M. Walker, Jr. framed the lone legal issue thus: “This dispute over the concept for a television show presents the question of the extent to which the Copyright Act… preempts contract claims involving copyrightable property.” The United States District Court for the Southern District of New York had granted the defendant’s motion to dismiss on preemption grounds. If the Second Circuit disagreed with the District Court… well, then the case wouldn’t even be a copyright case! Oh, the suspense…
In 2005, Forest Park Pictures—the production company owned by brothers Hayden and Tove Christensen—“formulated the concept of a television show” (in Hollywoodspeak) styled “Housecall,” the main character of which was to be a doctor who, “after being expelled from the medical community for treating patients who could not pay, moved to Malibu, California, and became a ‘concierge’ doctor to the rich and famous.” The brothers Christensen created a written “series treatment” for the concept, “including character biographies, themes, and storylines.” They mailed this written material to an employee of USA Network, then requested a meeting between a representative of Forest Park Pictures and a representative of USA Network. And, since one does not lightly deny the requests of a Sith lord, a meeting was arranged. Or it might have been because the concept was a good one, as it turns out.
According to the complaint: USA Network agreed to the meeting “for the express purpose” of hearing the plaintiffs pitch “Housecall”; USA Network and its representative knew that writer-creators “pitch creative ideas to prospective purchasers with the object of selling those ideas for compensation” and “that it [is] standard in the entertainment industry for ideas to be pitched with the expectation of compensation in the event of use”; and the USA Network representative said that prior to hearing the idea for “Housecall,” he had never heard of “concierge” doctors, or doctors who make house calls for wealthy patients, and “thought it was a fascinating concept for a television show.” Over the course of a week, the parties exchanged communications, but then discussions soon came to an end. “A little less than four years later,” however [cue timpani], “USA Network produced and aired a television show called ‘Royal Pains,’ in which a doctor, after being expelled from the medical community for treating patients who could not pay, became a concierge doctor to the rich and famous in the Hamptons.”
So California-based Forest Park Pictures and its brother-principals sued USA Network/Universal Television Network (a New York corporation) in the Southern District of New York—asserting one cause of action, for breach of an implied contract—and after amending their complaint twice, were met with a motion to dismiss the complaint, on the grounds that the alleged contract was too vague to be enforced and, in the alternative, that the Copyright Act preempts the claim. The May 10, 2011, decision of the Southern District runs to only four pages, most of it a recitation of the relevant facts, and the bottom line of it is: “Plaintiffs’ breach-of-contract claim is preempted by the Copyright Act and should therefore be dismissed.” (Because of this, Judge McMahon “decline[d] to address [the] other argument for dismissal.”)
Although, as mentioned above, the appellate court opinion is 23 pages long, it can be distilled to the following questions and answers: (1) Is the plaintiffs’ claim of breach of an implied contract preempted by the federal Copyright Act? Answer: No; and (2) If not preempted, did the plaintiffs adequately plead a claim under state law, so as to survive a motion to dismiss? Answer: Yes.
The question you might be asking is: Why would anyone even think—much less argue to a district court—that a simple implied-contract claim is preempted by copyright? After all, as the district court opinion stated:
Plaintiffs’ sole cause of action alleges that USA Network breached an implied contract. Plaintiffs allege that the contract was created when USA Network agreed to hear Plaintiffs’ ideas knowing that they were submitted with the expectation that Plaintiffs would be compensated if the ideas were utilized in creating a television series.
As the Second Circuit noted, “[The] Complaint does not allege that USA Network took [the plaintiffs’] actual scripts or biographies.” That is, there was no allegation of improper copying or use of any of the written materials that the plaintiffs had submitted to the defendant. So no copyright violation, right? And therefore no pertinence of the Copyright Act.
To be preempted by the Act, a claim must involve a work “within the subject matter of copyright” (see Section 301 of Title 17). As we all know and tell others at parties (and as the Second Circuit noted): Copyright protection exists for “original works of authorship fixed in any tangible medium of expression,” but does not extend to an “idea, . . . regardless of the form in which it is described” (see Section 102 (a) & (b)). The Second Circuit has held, however, that “works may fall within the subject matter of copyright, and thus be subject to preemption, even if they contain material that is uncopyrightable under section 102.” The scope of copyright “for preemption purposes, then, extends beyond the scope of available copyright protection.”
And, in the case at bar:
The work at issue in this case is [the] idea for “Housecall,” manifested in the series treatment (comprising character biographies, themes, and storylines). This treatment and associated written materials are “works of authorship that are fixed in a tangible medium.” *** Although Forest Park’s Complaint does not allege that USA Network took its actual scripts or biographies, the subject matter requirement is met because the Complaint alleges that USA Network used the ideas embodied in those written works. That the work contains within it some uncopyrightable ideas does not remove it from the subject matter of copyright. Moreover, because the ideas that are the subject of the claim were fixed in writing—whether or not the writing itself is at issue—the claim is within the subject matter of copyright.
And thus the first of two requirements for preemption was met.
Moving things along, though: USA Network did not demonstrate that the complaint seeks to vindicate a “legal or equitable right… equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.” Because “there are several qualitative differences between [an implied-in-fact] contract claim and a copyright violation claim”—of chief relevance among them the promise to pay—the contract claim is not subject to preemption. Which is good news for the plaintiffs, because they did not make a claim under the Copyright Act.
And that is the interesting part of this case, I think. (“Eureka!” …?)
All too often we hear reports of lawsuits alleging copyright violations when an aggrieved party believes that another party has stolen his or her idea—the very situation that does not invoke copyright law. It can be maddening (if you care about such things and talk about them at parties). Here, the plaintiffs(’ counsel) did not allege copyright infringement, even though the plaintiffs had submitted to the defendant material almost certainly protected by copyright law… because, as far as the plaintiffs could determine, the defendant had not used any of that actual protectable material. And even if the preemption analysis (made necessary by the motion of the defendant) brought into consideration unprotected/unprotectable material, that fact by no means should suggest retroactively that it would have been appropriate for the plaintiffs to claim copyright infringement.
Whether the plaintiffs and their counsel deserve praise for their restraint is not for me to say… but they are not going unrewarded. After finding that the contract claim would survive a motion to dismiss (even if the plaintiffs could fail to prove their claim… as anyone could), the Second Circuit vacated the district court’s judgment dismissing the complaint and remanded the case for further proceedings. The case will continue, with no copyright component. All is right in the Empire.
Originally posted 2012-08-06 17:28:23. Republished by Blog Post Promoter