The Ninth Circuit’s Quest to Bring Substantial Similarity Claims Back From the Dead

Pirates of the Caribbean Shape of Water substantial similarity cases
Pirates of the Caribbean / The Shape of Water

As the court reverses early studio wins in “The Shape of Water” and “Pirates of the Caribbean” cases, are dueling experts and lengthy litigation the shape of things to come?

In 2010, plaintiffs’-side copyright lawyer Steven Lowe wrote an article called “The Death of Copyright,” in which he proclaimed that “copyright infringement claims against motion picture studios and television networks, for all intents and purposes, are dead.”

Lowe’s support for this provocative assertion was pretty convincing. Within the Second and Ninth circuits, studios and networks had prevailed in all 48 of the “substantial similarity” cases that resulted in final judgments during the twenty years before the article was written. Almost all of these victories were on summary judgment.

The trend has continued, more or less unabated, over the past ten years, with courts ruling in favor of copyright defendants roughly 95% of the time. Indeed, during that stint, district courts have grown increasingly comfortable granting substantial similarity dismissals at the pleading stage, before any discovery is taken.

Interestingly, while the Ninth Circuit has affirmed district court dismissals in nearly a dozen copyright infringement cases over the past decade or so, none of these cases has been published. This leaves the circuit as one of the few that (as recognized by Judge Kim Wardlaw in a 2018 concurrence), “has never affirmed dismissal of a case alleging infringement of a literary work without discovery in a published opinion.”

While it’s common for any successful TV show or motion picture franchise to spawn a host of copyright infringement claims, many of these cases are pretty weak and deserve to be thrown out quickly. Jim Cameron and Fox were famously named in over a dozen copyright and idea theft cases filed by different plaintiffs, each of whom claimed to have created Avatar. All of these cases were tossed before trial.

None of this, however, has dissuaded plaintiffs’ lawyers from continuing to file new lawsuits. And now, despite the impressive track record achieved by studios and networks, there are signs that several judges within the Ninth Circuit (famously dubbed the “Hollywood Circuit” by former Judge Alex Kozinski) want to push back.

In similarly unpublished opinions rendered within weeks of each other, two Ninth Circuit panels reversed district court dismissals in high-profile copyright cases. One involves Guillermo del Toro’s Academy Award-winning film “The Shape of Water” (Zindel v. Fox Searchlight Pictures, Inc.). The other involves Disney’s billion dollar “Pirates of the Caribbean” franchise (Arthur Lee Alfred II v. Walt Disney Co.).

In each instance, the panel ruled that the case should not have been dismissed so soon—at least not until expert witnesses could analyze the extent and importance of the similarities alleged by the plaintiff.

In July 2020, The Shape of Water director del Toro and Walt Disney’s Searchlight Pictures filed a petition urging the full Ninth Circuit to review the panel’s ruling in Zindel, arguing that the ruling will chill free speech by promoting “protracted, meritless lawsuits.” Like most en banc petitions (especially those involving unpublished opinions), the court refused to reconsider its opinion, leaving the parties to continue their battle before the district court.

Disney is expected to file a similar petition in Alfred in order to try to clear up confusion between that case and previous decisions. For example, the “Pirates” panel faulted the lower court for disregarding “unprotected generic, pirate-movie tropes”—such as “treasure stories that take place on islands and in jewel filled caves”—even though the Ninth Circuit has previously approved of this “filtering” practice. In addition, the unpublished appellate decision in the “Pirates” case relied on a “selection and arrangement” theory that the larger circuit seems to have largely disavowed since deciding Metcalf v. Bochco in 2002.

In Metcalf, the Ninth Circuit held that even if the alleged similarities between a plaintiff’s and defendant’s work are too generic to be protectable when considered individually, the copying of the “original selection and arrangement” of these otherwise unprotectable elements may give rise to a viable infringement claim.

However, almost immediately after first applying the selection and arrangement test to literary works, the Ninth Circuit started to backtrack. The court’s decisions in Rice v. Fox Broadcasting  and Funky Films v. Time Warner suggested that Metcalf’s selection and arrangement test might be applicable only where the defendant admitted access to the plaintiff’s work—a form of “inverse ratio” analysis. The Ninth Circuit formally killed the inverse ratio rule earlier in 2020 in the Skidmore v. Led Zeppelin case. Skidmore also held that a “selection and arrangement copyright” is only infringed if the two works share the same particular combination of unprotectable elements. In other words, isolated or cherry-picked similarities won’t suffice. In light of Skidmore, the Alfred panel’s reliance on the selection and arrangement test is somewhat surprising. 

The Ninth Circuit’s resistance to early copyright dismissals has been foreshadowed for several years. In addition to the court’s refusal to affirm a pleading-stage victory in any case that it has deemed fit to publish, several circuit judges have signaled their view that the “Death of Copyright” may have been premature. For example, in her 2018 concurrence in Astor-White v. Strong, a copyright infringement case concerning Fox’s television series “Empire,” Judge Wardlaw declared that “judges have no particular expertise in determining what is and is not generic” in cases involving literary works. She also opined that discovery, as well as the use of experts “would have greatly informed the decision as to substantial similarity.” (And yes, Astor-White was also unpublished.)

Judge Wardlaw reiterated her earlier Astor-White concurrence in the Zindel “Shape of Water” opinion, in which she and her fellow panelists wrote that a pleading stage dismissal should be limited to situations in which the similarities between two works were “only in uncopyrightable material or are de minimis.” The panel also suggested that expert testimony would assist in conducting the literary analysis needed to determine the extent and qualitative importance of the alleged similarities between the two works.

In the Alfred “Pirates of the Caribbean” opinion, the panel likewise held that “expert testimony would aid in determining whether the similarities Plaintiffs identify are qualitatively significant.”

So where do these cases leave us? Will discovery and expert testimony become mandatory before courts will dispose of all but the most facially frivolous literary works cases? If so, these cases are about to get exponentially more expensive—which may be good for lawyers but not so good for anyone else.

The biggest problem, however, is the lack of any real guidance from the circuit that deals with more of these types of cases than any other federal circuit in the country. Would the “Shape of Water” and “Pirates” opinions have come out the same way if they were published? It’s unclear, but this something that content creators, lawyers, and district court judges deserve to know. Despite the fact that unpublished decisions aren’t binding, stakeholders and lower courts regularly rely on them.

And besides, any news as important as the health status of copyright is surely worth putting on the record.

UPDATE—check out our new post on the Ninth Circuit’s recent unpublished affirmance of a substantial similarity case involving the film “Inside Out,” which adds some additional confusion and intrigue to an already confusing and intriguing landscape.

UPDATE TO THE UPDATE—the Ninth Circuit has upheld a dismissal in yet another unpublished case, this time in connection with a copyright infringement claim involving the Fox television series “Empire.” Check out our new post for the scoop on the “Empire” ruling.

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