* The Honorable Walter Herbert Rice, Unit ed Sta tes Dist ric t Ju dge f

or the Southern Distri ct of Ohio, sit ting by designat ion.

1 RECOMMENDED FOR FULL-TEXT PUBLICATION Pursuant to Six

th Circuit Rul e 206

ELECTRO NIC CIT

ATION: 2004 FED App . 0082P (6th C ir.) File Name: 04a00 82p.06



### UNITED STATES COURT OF APPEALS

FOR THE SIXT H CIR CUIT

_________________

M URRAY H ILL P UBLI CATION S , I NC ., Plaintiff-Appellee/

Cross-App ellant,

v.

T WENTI ETH C ENTURY F OX F IL M C ORPORATI ON , Defenda nt-Appel

lant/ Cross-Appellee. X

- - - -

> , - - - - - - - N Nos. 01-2668/2721

Appeal from the United States District Court for the Eastern District of Michigan at Ann Ar bor. No. 97-60405—Marianne O. Battani, District Judge.

Argued: August 7, 2003
Decided and Filed: March 19, 2004
Before: BOGGS, Chief Judge; SI LER, Circuit Judge; and RICE, District Judge. * 2 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

_________________ COUNSEL

ARGUED: L ouis P. Petrich, LEOPOLD, PETRICH & SMITH, Los Angeles, California , for Appellant

. Mayer Morganr oth, MORGANROTH & MORGANROTH
, Southfiel d

Michigan, for Appellee. ON BRI EF: Loui s P. Petrich, LEOPOLD, P ETRICH & S MITH, Los A nge les
, California, Maria N. Bernier, Gre gory B. Jordan, REED & SMITH, Pittsburgh, Pennsylvania, Laurie J. Michelson, BUTZEL LONG, D etro it, Michig an, J. Micha el Huge t, BUTZEL LONG, Ann Arbor, Michig an, for Appe ll ant. Mayer Morganroth, Jeffrey

B. Morganroth, Jason R. Hirsch, MORGANROTH & MORGANROTH, South fi eld, Michigan
, for Appellee.

_________________

OPINION

_________________ BOGGS, Chief Jud ge. T wentieth Century Fox Film Corporation(“Fox”) appeals following a jury

verdict in favor of plaintiff , Murray Hill Public ations, Inc. (“Murra y Hill”), in its actionfor copyr

ight infringement. During the cr eation of the movie “Jing le A ll The Way” (“JATW”), Fox rece ived from Murray

Hill a submission of

the screen

play for “Cou ld This Be Christmas” (“CTBC”). After the thea trical release of JATW, Murray Hill sued F ox, alleging that the JATW movie infri nged upon its copyright of the CTBC screenplay . At trial, both Fox and Murray Hill pres ented expe

rt evide nce to establish whether the JATW movie

was substantially similar to the CTBC screenplay . After the jury returne d a verdict for Murray Hill, the d

istrict c ourt disa

llowed da

mage it em s representing

the bulk of

the jury award and denied attorney ’s fees to Murray Hill. On appe al, F ox ar gu es that it wasNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 3

entitl ed to summary

judgmen t on the issu

e of subst

antia l si mi la ri ty, that the t rial was tainted by imprope r expert testimony by Murray Hill’s

expert witness and by misleading jury instructi ons, necess itating a new trial, and that the damages awa

r ded were unsupported in law or fact. Murra y Hill cross-appealed

and arg ues that it was entit led to the full damages awarded by

the jury and a lso toattor

ney ’s fe es. We

revers e because

Fox was en

titled to ju

dgment as a matter of law. We do n

ot re ach t he iss ues o f the exp ert evid ence, the jury instructi ons, the a

ttorney ’s fees , or the da

mages.

I

The pr in ci pa l a ut ho r o f t he JA TW sc re en pl ay was Randy Kornfield, a Fox script reader and freelanc e writer of

screen play s. In 1993, Kornfield tried to buy a Mighty Morphin’ Power Ranger action f igure as a birthday

present for his son. The difficulties he encountered in this pursuit and

convers atio ns with other parents similarly engaged gave Kornfie ld the idea for a screenplay . On Januar y 11, 1994, Kornfield registered his “treatment,” a six-page summary

of

a proposed screenplay , thencalled “ A Christma s Hunt,” w

ith the Writer’s Guild of America. On July 17, he r egistered a fleshed-out

screen play of this tre atm e nt. Executives at the Fox Searchl ight divi sio n lik ed the screenpla y a nd bough t it for “1492 Pictures,” a pro ducti on compan y affiliate d with Fox. From No vembe r 1994 throu gh Ju ne 1995, K ornfield worked with Fox and

1492 Pi ct ur es to re vi se th e s cr ee np la y. InNove mber 1995, Fox hire d two more scriptwr iters to

con tinue editi ng and e nhanc ing th e scree nplay. Du ring t hi s editorial process, the screenplay acquired the JATW title.

The author

of the CTBC screenplay

was Brian Webster, a Detroit school t eacher and aspiring script writer. I n 1988, inspired by his difficulties in obtaining a G olden Batman a s
a Christmas p

resent f or his son, Webster wrote the first draft of a screenpl ay, initially entitled “Action Man: The Toy ,” 4 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

then“So This I s Christma s,” andfinally “Could Th is Be Christmas.” Webster f

irst registered t

his screenplay

with the Copyright Office in1989 and r

e-registered i

t in 1991. From 1989 through

1993, Webs ter and h

is a gent ma de repeated atte mpts to sell this screenplay to a va riety of potent

ia l produce rs. While Mu

rray Hill pleaded a

number of theories

onhow the scree nplay could have found its way to Fox du ring this period, the district court considered all of the theories too specul at ive and found that Fox did not have

access to the CTB C sc re enplay during this period. Murray Hill does no t raise this issue on appeal. Significantly , on February 4, 1994, Webster sold anoption to CTBC to Murray Hill and eventually tra

nsferred all rights in CTBC to Murray Hill. On June 21, Murray

Hill submitted CTBC to the Family Film division of Fox. On July 9, the CTBC screenplay was read and summarized by Rudy Romero, another Fox script reader and friend of Kornfield’s. Romero was also the script reader who a few months later p erform ed the same task for the JATW scr eenplay. On August 1, Fo x decline d the CTBC screenp la y. After F ox decline d the scr eenplay , Murray Hill made no f urther a ttempts to s ell it.

At some time in February 1996, Robert Laurel, the principal of Murray

Hill, read an article in Dail y Variet y about the JATW movie then in production. Concerned about the appar ent si milarities between JATW and CTBC, Laurel contacted his attorney s, who sent a

series o f cease -and-de sist letters to Fox. Early settlement neg otiations between Fox and Murray Hill fa iled over

Murray Hill’s unw

illingne ss to commit to any particular

theory of how and w

hen Fox co

uld have obtained access to the CTBC screenpla y and Fox’s refusal to share

some of its

informat ion unti l Murray

Hill committed

to such a theo ry. Nevertheless, Fox proceeded with the JATW movie. O n Novembe r 22, 1996 , the movie

was releas ed and qu

ickly proved to be a commer

cial suc cess.Nos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 5

1 T he e ar l i er

f i nd i ng di d n otpr ec l ud e a l l po ss i bi l i t y t ha t t he JA TW treatment infri nged , b ecause Murray Hill h ad argued that t he all eged “stri king si mi l ar i t y” be t we en t he CTBC sc re en pl ayan d the JA TW treatm ent estab lished a ccess inferentia lly. As of D ece

mber 20 00, the

JA TW movie had earned $183 million.

OnDecember 3, 1997, Murray Hill filed suit against Fox in the United States District Court for the Eastern Dis trict of Michi gan. While this complaint alleged a multitude of theo ries of

liability, the only

claim still relevant is Murray Hill’s allega

tion that the JA TW movie infringed upon the copyrig htof the CTBC screenplay . The court made a finding that Murray Hill fa

iled to establ ish directly that Fox had

access to the CTB C screen

play at a ny tim e before Murray Hill submitted it to Fox. The case thenproceeded to trialby ju ry. The district court instructed the jury based

on the Nin

th Circuit’s test for judging the “sub stantial similarity” of copyrig hted works. As the jury

was deliberating, the court found that the JAT

W treatme

nt, crea ted prior to the CTBC submission, did not infringe on the CTB C scr ee np la y. 1 However, the jury

was not in fo rm ed of

th is ru li ng . F ou r d ays later, the jury rende

red a verdict in favor of Murra y H ill. The damages included $1 million inproducer’s fees and $500,000 inwriter’s fees that Murray Hill lost bec ause Fox did not contract with it for

these se rvices, $2 million in

lost good will, and $500,000 i

nmerchandising revenue Fox earne d from the sales of a JATW sound track and toys. While the jury found that JATW had not yet earned any profitsfor Fox, it estimated Fox’s future prof

it s on JATW at $1 5 million an d also awarded that amount to Murray Hill. Acc ordingly, the districtcourt

entered judgment in favor of Murray Hill in the

sum of $19 million. Fox renewed its motion for judgment as

a mat t er of law and also moved for new trial. The c ourt granted Fox’s motion for judg

ment as a matter of law with 6 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

respect to all damage items exceptthe producer’s and writer’s fees, thus reducin

g the award to $1.5 million . The cou rt also declined to award attorne y’ s fees to

Murray Hill and entered judgment in the reduced amount. Before this court now a re Fox’s timel

y a ppeal an d Murray Hill’s time ly c

ross-ap peal.

II

To determine whe ther the district court erred in allowing this case to go to the ju ry, we must look both at the developinglaw of copyr

ight as it addresses the elements of proof for copy right in fringe

ment, and to the spec ific ele

ments of the two wor ks before us. We will first lay out the framework

of law, a s our cir

cuit has pronounced

it (Part III); then de scribe the dramatic elements of the two works (Part IV); and, finally, apply

the law to an as sessment of the relation of the protectible elements of the copy ri g hted work to the overall tenor of the allegedly infringing

work (Part V).

III

T itle 17 of the U

nited State s Code pro tects owners’ copy rightsin creative works. 17 U.S.C. §§ 1 01 -1332. Copyright owners have the exclusive right to reproduce the protected work, to prepare derivative works, and to distribu

te copies to the public. 17 U.S.C. § 106(1)-(3). In the case of infring ement, the owner of a copy righted work may

s eek injunctive relief, impoundment and disposition of the infringing articles, damages, infringe r’s pr ofits, and legal costs, including attorney ’s fees. 17 U.S.C. §§ 502-505. “To

suc ceed in a copy

right in fringe

ment acti on, a plai

ntiff must esta blish that he or she owns the copy righted creation, an d that the defendant copied

it.” Kohus v. Mariol , 328 F.3d 848, 853 (6th Cir. 2 003); see also Feist v. Rural Tel. Serv. Co. , 499 U.S. 340, 361 (1991). “Howev er, in mos tcases courts have

no objective evidence of the process by whic h the challenged object was developed and thus are forced to rel y on theNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 7

inferences which may

be draw n from two

basic fa cts: acc ess and similarity.” Gla nzmann v. King , 8 U.S.P.Q.2d 1594, 1595 (E.D. Mich. 1988) (citi ng Ideal Toy Corp. v. Kenner Prods. , 443 F. Supp. 291 (S.D.N.Y. 1977)). “[W]here there is no di rect ev idenc e of cop ying, a plaintif f may establish ‘an in ference of copying

by showing ( 1) access to the allege dly

- infringed

work by the def

endant(s) and (2) a substantial

similarity

between the two works at issue.’” (emphases added). Kohus , 328 F.3d at 853-54 (quot ing Ellis

v. Diffie , 177 F.3d 503, 506 (6th Cir. 1999)). “Thus, copy ing is an essential element of infringement and s ubs tantial similarity between the plaintiff’s and defendants’ works is an

esse ntial element of copy ing.” Wick

ham v. Kno

xville I nt’ l Energy Exposit ion
, 739 F.2d 1094, 1097 (6th Cir. 1984) (citations omitted).

The access

element o f a copy

right infr ingeme

nt claim is usually the

less problematic. “Access is essentially ‘hearing

or having a reasonableopport unity to hear t he plaint iff[’s] work an d thus having the opportunity to copy .’” Ellis , 177 F.3d at 506 (quot ing Tree Publ ’g Co. v. W arner Bro

s. Records
, 785 F. Supp. 1272, 1 274 ( M.D. Tenn. 1991)). “Acce ss is proven when

the plaintiff shows that the defendant had an opportun i ty to view or to copy plaintiff’s work.” Glanzmann
, 8 U.S .P.Q .2d at 1595 ( citi ng Sid & Marty Krof

ft Television Prods. v. McDonald’s Corp. , 562 F.2d 1157, 1163 (9th Cir. 1977)). “Although ‘evidence that a third pa rty with whomboth the plaintiff and defendant were concurrently dealinghad possession o f p laintiff ’s work is

sufficie nt to estab lish access by

the defendant,’ ‘[a]ccess may not be inferred throu gh mere speculation or conjecture.’” Ellis , 177 F.3d at 506 (qu

oting 4 Me lville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.02[A] (hereinaf ter “Nimmer”)). “Amere assertion of access, unsupported by probative evidence is inadequate.” Glanzma nn , 8 U.S.P.Q.2d at 1595 (citing Scott v. Paramount Pictures Corp. , 449 F. Supp. 518, 8 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

520 (D.D.C. 1978), aff’d , 607 F .2d 494 (D.C. Cir. 1979)). “Nor is a ‘bare possibility’ of a ccess sufficient. A plaintiff must es ta bl is h t ha t d ef

en da nt (s ) h ad a ‘ re as on ab le po ss ib il it y’ to view plaintiff’s work.” Glanzmann , 8 U.S.P.Q.2d at 1595 (ci ting Meta-Film Assocs. v. MCA, Inc. , 586 F. Supp. 13 46
, 1355 (C.D. Cal. 1984)). See also Grubb v. K MS Patriot

s, L.P.
, 88 F.3d 1, 4 (1st Cir. 1996) (denying copyrig ht infring eme nt clai m on design of football team’s logo where alleged infringer had large ly completed his desig n before access to plaintiff’s design).

Where the plaintiff can

not p rove access, the copy right infringement

cla i m can still succeed, but only by proof of a hig her level of similarity than the mere ly substantial. Se e Ellis
, 177 F.3d a

t 507 (noti

ng that “ [s]ome case

law indicates that the stronger the similarity between the t

wo w orks in question, the less compelling the proof of access needs to be” (citing Nimmer § 1 3.02[B])) . The qua ntum of simi larity

that will substitute

for proo f of acc ess is “ striking similarity.” Suc h st ri ki ng si mi la ri ty “ pr ec lu de [s ] t he po ss ib il it y o f indep endent

creation.” Glanzmann , 8 U.S.P.Q.2d at 159 5 (citi ng Ferguson v. Nat’l Broad. Co.
, 584 F.2d 1 11 (5th Cir. 1978)). Of course, even in a striking similarity case, “[a]bsent copying, there can be no infringement.” Mazer v. Stein , 347 U.S. 201, 218 (1954). However, striking similarity carr ies the burdens of proof that the infringing work is sufficient similar

as to intrude into the copyrig hted work’s protection and that the defendant

must have had access to the copyrig hted work,

even if the plaintiff can

provide no extrinsic proof of t hat fact.

Inthe usual infringement case, access can be shown and the

more difficult proof is that of “substantial similarity.” I n order to focus this inquiry, “[c]ourts have established various tests for the substantial similarity finding.” Kohus , 328 F.3d at 854. “The traditional approach is the ‘ordinary obs erver’

or ‘audience’ test, whi c h ‘requ ires t he tri er of fa ct to ga uge the similarities of the two

works sole ly

on the basis of his ‘netNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 9

impression’ and witho

ut rely in g on expert analy sis or dissection.’” Ib id

. (citi ng Ellis , 177 F.3d at 506 n.2). “[C]ourts have un de rt ak en va ri ou s m od if ic at io ns —t ypi ca ll y, by adding a prior s tep that d

oes allow expert t es timony and analytic dissection.” Kohus , 328 F.3d at 854.

The Second Circuit has adopted a t est tha t distinguishes betwe e ntwo essen

tial elements in a s

ubstantia l similarit

y suit–“(a) that defendant copied f rom plaintiff’s copyr

ighted work and (b) that the copy

ing (assuming it to be proved) went

so far as to constitute improper appropriation.” Arnstein v. Porter
, 154 F.2d 464, 468 (2d Cir. 1946). Expert testimony is appropriate under the first pa rt, but not under the second because “the determination of

improper copying

is to be made fromthe vie wpoint of the ordinary obse rver.” Kohus , 328 F.3d at 854 (citi ng Arnstein ). The Ni nth Circui

t, the court of appeals with the largest case load and experience in the area of movie industry copy

right infringement, has adopted an alternative two-part test. This test consists of an “‘extrins i c tes t,’ i n which expert testimony and analy tic dissection may be employed to help the jury ‘determine whet

her there has been copying of the expression of an idea rather than just the idea i ts elf’ . . . and the ‘intrinsic test,’ in which expert testimony is not appropriate because the trier of fact must determine substantia

l similarit y f rom th e vie wpoint of the ordinary reasonab le pers on.” Kohus , 328 F.3d at 854 ( summarizing Krofft , 562 F.2d at 1163-6 4). While these
names for the parts have remained, “[b]ecause the c ri te ria incorporated

into the extrinsic test encompass all objective manifestations of crea

tivity , the two te st s are mor e sensibl y described as objective and subjective analyses of expression, having stray

ed from Krofft’s division between expression and ideas.” Shaw v. Lind

heim , 9 19 F.2d 1353, 1357 (9th Cir. 1990) (citations omitted) . The extri nsic test focuses on articula ble similariti es betwe en plot, themes, dialogue, mood, settin g, pace, c

haract ers, and sequenc e of eve

nts in the two 10 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

works. Kouf v. Walt Disney Pictures & Television , 16 F.3d 1042, 1046 (9th C ir. 1994) . “[S]atis faction of the extr insic test create s a triabl e issu e of fact in a copyrig

ht action involving a literary

work.” Shaw , 919 F.2d at 1359.
This court, however, had until recently not adopte d any of the refine d version s of the su bstantia l simi larity test. Ellis
, 177 F.3d at 506 n.2. Lacking gu idance, the distri ct court in the present

case ad opted the Ninth Circ

uit test. However, while this appeal was pending, we, in Kohus , adopted t he District of Columbia Cir

cuit’s te st. In

this test “the first

step ‘requires identifying whic h aspects of

the ar ti st ’s wo rk , i f a ny,
are protectible by copy right,’ the secon d ‘involves determiningwhether the a llege dly infringing wor

k is ‘substan tially similar’ t

o protectible ele

ments of th e artist’s

w ork.’” Kohus , 328 F .3d at 855 (q uoti ng Sturdza v. U nite d Arab Emirates , 281 F.3d 1287, 1295, 1296 (D.C. Cir. 2002)). This test is more similar to the Ninth Circuit test than it is to the Second

Circu it test. See Kohus , 328 F.3d at 855 n.1 (tracing history of the Sturd

za test) . The second part of our test, and the Ninth Circ

uit’s intrinsic

test, both address the questionof whether the two works ar e, taken as a whole, substantia lly s imilar in lo ok and fe el to a jury. The f irst part of our test, and the N inth Circu it’s extrinsic

test, both require

a determination

of what e lementsof the copyr ighted work are protected by t he law a nd an exclu sion of co

nsidera tion of all elements that are not.
However, si gni fic ant di ffe ren ces rem ain in bot h pa rts . In particular, we apply a more string ent standard regarding when to allow expert testimony on the first part of the test. Also, nothaving adopted t

he eigh t Kouf factors, the first part of our test remains more free in form than the Ninth C ircuit’s extrinsic test. “The essenc e of the f irst step is to filter out the unorigi nal, unprotectible elements . . . through a variety of analyses.” Kohus , 328 F .3d at 855 (c itin g Feist
, 499 U.S. at 345).Nos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 11

2 Of the t wo princi ples, that

ideas ar e not p rotect ible an d that expressions are p rotec tible, it is the f ormer that

is t he str onger. Where an idea by necess ity , or near -neces sit y, or custom, lea ds to a part icul ar

e xpression, it is the exp ression which b eco mes u npro tected , rather th a n the idea th at bec ome s pro tected

. To reach t he opposi te c onclu sion

woul d, through the backdoor, cre ate a f orb idde n cop yright in ide as. Shaw , 919 F.2d at 1360. This brings us to the most complex part of the substantial similarity inquiry : th e dete rmination of which parts of the origina l work ar e protectible and which ar

e not. I t is “impossibl e to articu

late a de finitive d

emarca tion th a t

measures when the

simil arity

between works involves copying of prote cted expr

ession; de cisions mustinevitably be ad hoc.” Shaw , 919 F .2d at 135 6 (cit ing Krofft , 562 F.2d at 1164). Neverthel ess, certain categorical judg ments and guidep osts have been

es ta bl is he d. Un or ig in al wo rk en jo ys no copyrig htpr otecti on. “The sine qua non of copy right is

or ig in al it y. To qualify for copyrig ht protection, a work

must be ori ginal to the author.” Feist , 499 U.S. a t 345. “[I ]t is a constitutional requirement that a plaintiff bringing an infringement

c laim must prove ‘copying of constituent elements of the work that are original .’” Kohus , 328 F.3d at 853 (e mphasis added in Kohus ) (quo ting Feist , 499 U.S. at 361). However, “the requisite level of crea tivity is extreme ly low; even a slight amount will suffi ce. The

vast major

ity of works make the grade quite e as ily, as they possess some creative sp ark, ‘ no matter how crud

e, humble or obvious ’ it might be.” Feist , 499 U.S. at 34 5 (quoting 1 Nimmer, § 1.08[C][1]).

Inthe general run of case s, where minimal creativity ca n be shown, the vital d

isti nction is b etween

ideas an

d their expressions

. Copyright does not prote ct ideas, but only the expression of

ideas. Kohus , 328 F.3d at 855. 2 “The re al task ina c op yr ight i nfringement action, then, is to determine 12 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

whether there has been copy

ing of t he ex pression of an idea rather than just the idea itself.” K rofft
, 562 F.2d at 1163.

“ [N] o one infr

inges, u nless he d

escends so far in to what is

concre te [ina work] as to invade . . . [its] expression.” Nat’l Comics Publ ’ns v. Fawcett Publ’ns , 191 F.2d 594, 600 (2d Cir. 1951). To

draw the distinction betwee

n ideas a nd their expressions, courts use the abstraction test first described by Judge Learned Ha

nd with respect to a theatrical play

. Kohus
, 328 F.3d at 855.
Upona ny work, and e specially upon a play , a great number of pattern s of i ncreas ing ge nerality will fit equally well, as more and more of the incident is left out

. The la st may perhaps be

no more than the most general statement of what the play is a

bo ut, and a t times might consist on

ly of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwis e the playwrig

ht could p r event the

use of his ‘ideas,’ to which, apa

rt f rom their

expression, his property is neve

r extended.

Nicholsv. Universal P ictures Corp. , 45 F.2d 119, 121 (2d Cir. 1930). This test will only place a work’s elements on a spectrum from more expression-like to more ide a-li ke. It does not pick the point on t he spect rum at whi ch eleme

nts

cease to be unpr

otected ideas a n d become

protect ible express i ons. Nevertheless, it serves as a useful, if not dispositive, analy

tical tool in drawin g these distinctions. See Peter Pan Fabrics v. MartinWeiner Corp. , 274 F.2d 487, 489 (2d Cir. 1960) (noting that “no principle can be stated a s to when an imitator

has gone beyond copy

ing the ‘idea,’ and has borrowed its ‘expression’” and that such decisions hence mus t “inevitably be a

d hoc”).

Within the realm of wor

ks of fiction, literary

or cinematographic, expressions not protectible because they follow directly from unpr otectible ideas are known as scènesNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 13

à faire, “those e lementsthat follow natura lly from the work’s theme, rather than from the author’s creativity.” Kohus
, 328 F.3d at 856 (quoting Nimmer § 13.03[F][3]). Scènes à faire

are those “incidents, characters or settings wh ich are as a pra ctical matter in

dispensa ble, or a t least sta

ndard, in th e treatment of a gi ven topic.” Sturdza , 281 F.3d at 1295. A few examples provide concreteness to this definition:

If Tw elfth Nig

ht were c opy

righte d, it is quite

possi bl e that a secon d comer might so closely imitate Sir Toby B elch or Malvolio as to infringe, but it would not be enoug h t hat for one of his characters he c ast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward w ho beca me
amorous of his mistress. These w ould be no more than Shakespeare’s ‘ideas’ inth e play, as little capa ble of monopoly

as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrig hted; that is the penalty an a uthor must bear for

ma rk in g t he m t oo in di st in ct ly.

Nichols
, 45 F.2d at 121. Other genres provide a dditional examples of scènes à faire. “E lements such as dr unks, prostitute s, vermin a

nd derel ict cars

w ou ld appear in any realistic work about . . . policemen in the South Bronx” an d

are therefore not protectible. Walker v. Time Life Films , 784 F.2d 44, 50 (2d

Cir. 1986). Similarly, “[f]oot chases and the morale problems of policemen, not to mention the fa miliar figure of the I rish cop, are venerable and often-recurring themes of police fiction ,” an d hence not protectable. Ibid. “While both the Dinosaur World books and the Jurassic Park works share a setting of a d inosaur zoo or adventure park, with elec t rified f

ences, a utomated tours, dinosaur nur

series,

an d uniformed workers, these settings are c lassic scen es a faire that flow from the uncopyr

ightable concept of a dinosaur

zoo. Thus, thou

gh per haps subst

antially similar, the se ttin gs 14 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

are not protectible.” Williams v. Crichton , 84 F.3d 581, 589 (2d Cir. 1996). “ The common use of suc h stock . . . merely reminds us that in Hollywood, as in the li fe of me n g en er al ly, the re is only rarely

anything ne

w under the sun.” Id. a t 58 8 (q uoting Berkic v. Crichton , 761 F.2d 1289, 1294 (9th C ir

. 1985)).

Another questionof degreein the evaluation of substantial similarity is the amou

nt of copy

ing nec ess ar y t o establish infring ement. At the extre mes , the rule s of law a re aga in clear. “Duplication or near identity is not necessary

t o
e stablish infringement. ” Krofft , 562 F.2d at 1167 (c it in g Runge v. Lee , 441 F.2d 579, 582 (9 th Cir. 1971), and Williams v. Kaag Mf

rs. , 338 F.2d 949, 9 5 1 (9th Cir. 1964)). “Ast or y h as a linear dimension: it begins, continues, and ends. If a defenda

nt copies substantial portions of a plaintiff’s sequence of events, he does not escape inf ringem ent by adding original episodes somewhere along the line.” Warner B ros. v. ABC , 720 F.2d 231, 241 (2d Cir. 19 83). “Th e misappropriationof even a small portion of a copy righted work . . . may constitute an infring ement under certai n circums tan ces.” Murray Hill Publ’ns v. ABC Comm. , 264 F.3d 622, 633 (6th Cir. 2001) (citing Universal Pictures Co.

v. Harold Lloyd Corp. , 162 F.2d 354, 361 ( 9th Cir . 1947))

. “Even if a copi ed portion be rela tively small in proporti on to the entire work, if qual itati vely important, the finder of fact may proper ly find substantial similarity .” Baxter v. MCA, Inc.
, 812 F.2d 4 21, 425 (9 th Ci r. 1987). “No plagiarist can

excusethe wrong by

showing how much of his wor k he did notpirate.” Shaw , 919 F.2d at 1362 (quo ting Nimmer, § 13.03[B][1][a]) . Howeve r, “individual line s of dialo gue [in

a movie] are not automatically entitled to copy right protection.” ABC , 264 F.3d at 632. “[W]hen a single line of

a larger copy

righted work is appropriated by analleg ed infring er, the t

est is whe ther ‘the work is re cogniza

ble by an ordinary observer as having been take n from the copyrig

htedNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 15

source.’” Id. at 633 (quot ing Harold Lloyd , 162 F.2d at 361). “[I ]t is the combination of many diffe rent elements which may command

copyrig ht protection because of

its particular subjective quality.” Krofft , 562 F.2d at 1169 (ci ting Rey her

v. Children’s Television Workshop
, 533 F.2d 87, 91-92 (2d Cir. 1976), and Ideal Toy Corp. v. Sayco Doll Corp. , 302 F.2d 623, 624 (2d Cir. 1962)). “While any one similarity taken by itself seems trivial, .

. . it would [not] be improper for a jury to find that t

he over- all impact and effect indicate substantial appr opri ation.” Krofft , 562 F .2d at 1169 ( quot ing Malkin v. Dubinsky
, 146 F . Sup p. 111, 114 (S.D.N.Y. 1956)). However, “random

similariti e s scattered throughout the works” can be discounted. Litchfield v. Spielb erg , 736 F.2d 1352, 1356 (9th C ir. 1984) . “Su ch a sca ttershot approach

ca nnot support a f

inding of substantia

l similarit y be cause it fails to address the underly ing issue: whe th er a lay

observer would consider the work s as a who le substa ntially similar to

one another.” Williams , 84 F.3d a t 590 (citi ng Wal ker , 784 F.2d at 50, and Burroughs v. Metro-Goldw yn-Mayer , 683 F.2d 610, 624 (2d Cir. 1982)).

Fi na ll y, the issue arises of the prope r standa rd for a ppellate review of a gr ant or denial of a motion for judg ment as a matter of law in a copy

ri ght infringement case. The cornerstone of such review in cop yr ight inf ringement case s, just as in other cases, is whether, given the law and evidence presented, a r easonable jurycould have found for the nonmoving party . Never

theless, the issue of whether substantial similarity exists has certain features with special significa nce in the application of this standard. A jury deciding the issue of substantial similarity not only makes findings of historical fact, but us ua ll y a lso serve s as a pro xy for the wor ks’ int ended audience. In this role as pr oxy, jurors decide

no t only what happened, b ut also can be properly influenced by whether their expo sure to the alleged infringing work wou

ld diminish their appetite for the copy

righted work. See Kohus
, 16 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

32 8 F.3d at 856-57. As the diminished market for copyrig hted work is the harm that the copyrig htlaw seeks to avoid, this issue is crucial and contains an element of subjectiv ity no t f ou nd in mo st ot he r j ur y determinations. Therefo re, courts have recognized “that g ranting summary judgmen t, particu larly in favor of a def endant, is a practice to be used sparingly

in copyrig

ht infringement cases.” Wickham
, 739 F.2d

at 1097; accord Kohus , 328 F.3d at 853. However, even taking into account this factor, summary judgment is still permissible and may even be re quired. Wickham
, 739 F.2d at

1097; Kohus , 328 F.3d

at 853. Cou

rts “have frequently a

ffirmed summary judg

ment in favor of copyrig htdefenda

nts on the i ssue of su

bstantial s imi larity.” Shaw
, 919 F.2d at 13 55. One reason to do so is that the questionof substantial similarity can usually be decided on the basis of the works themselves and rarely, if ever, involves questions o f cred ib il it y, t he pe cu li ar pr ov in ce of th e j ur y. Also, while judges “may not be qua

lified lite rary critics, [t he y] are fitted by

training and

experience to compare literary

wo rks and determine whether they evidence substantia l similarity.” O’Neill v. Dell Publ’g Co. , 630 F.2 d 685 , 690 (1st Cir. 1980).

IV

Withthis back

ground on somerelevant aspects of thelaw of copy right in fringe

ment, we t

urn to th e facts o f this case. The crucia

l issue is the degr

ee of si mil arity between CTBC and JATW . Whi le bot h of th ese wor ks wen t thro ugh

numerous revision s, Murra y H ill’s cor

e claim is

tha t the JATW movie

infring es o n its copyright to th e CTBC screenplay . A detailed summary of both is in order:

CTBC tells the story of Be ss Parker, a poor white divorced cleaningwoman with a

six-year-old son, Tomm y. Lacking a father figure, Tommy

focuses obsessively on

“Action Man,”

a super -her o action f

igure. Twelve d

ay s before

Christmas,Nos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 17

Bess goes to t

he local to y s tore to buy the toy she has previous ly

reserved. But when she finds herself short of c ash to pay for it and the

store clerks refuse to hold it for her an y longer, Bess hides the toy in the store . The n ext day Bess returns to buy the toy

she stashed away , but it is snatched out of her hands by Clare, a wealthy black womanwho owns and operate s a real estate business. Bess attempts to recover the toy by threatening

Clare with an authe ntic-lo oking toy g un, butCl ar e g et s a wa y. Dejecte d, Bessreturns to the subsidized apartment that she shares with her mot her. Be ss and Tomm

y buy a cheap Christmas t

ree and decora te it.

The ne xt day, while cle aning the home of Carol, an employee of Clare ’s, Bes s meets Steve, Carol’s brother and

owner of a toy store. Later tha

t day , Bess ta

kes Tommy

to see

a toy store Santa Claus without realiz ing that

it is Steve i

n disguise. When Bes s become s angry at t he Santa Claus for promising Tommy an Action M an figu re, Steve reveal s his identity and S teve and B ess agree to go on a da te. That eveni ng, Carol calls Be ss to tell he r that Cla re’s company

is going to tear down Bess’s ap ar tm en t b ui ld in g. Th e n ex t d ay, Bess goes to a bank branch to obtain a loan to pay off her bills and a scene ensues when she accidentally pulls the toy gun outof her pu

rse. Be ss’s next cl eaning job is C lare’s house, where she meets Eric, Clare’s husband and a doctor. E

ric is

a nnoyed that Bess mistakes him for a servant, p erhap s because Eric too is black. At night, Eric sha res this st ory with Clare. The next day, Steve ta kes Bes s to Carol’ s office party where B ess for the first time realizes that the woman wh o took her action

figure, the woman whose house she has been cleani ng, and the woman whose company is goingto tea r down her home are all one and the same.

Back at home, B ess agr

ees to g o sle d ding with Steve. When Steve re

turns to Ca

rol’s house , he tells her about his feeli ngs for Be ss. Over the following days, Steve takes Bess and Tommy sledding and shopping . B ess and her mother 18 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

meet at a cof fee shop , discussth eir difficulties in finding an ActionMan toy

and Bes s’s poten

tial roma n tic involvement with Steve, whom both women believe to be a mere Sa nta Claus impers onator

rather than the owner of the toy store. Meanwhile, Steve has been try ing to use his position as a toy store owner to obtain an A ction Man toy for Tommy . On Steve an d Be ss’s n ext d ate, Be ss in sist s that they go Christmas shopp ing a

t an inexp ens ive store , becau se Bess believes that the expensive depart men t store suggested by Steve is unafford

able for them.

The next time B ess goe s to clea n Clare’ s house, s he discovers a bag full of A ction Man toys and, annoy ed at Clare’s greed, hides one of the fig ures under

a pillow. When Be ss visi ts Carol’s house in order to see Steve, Carol mentions that Steve is in fact a well-to-do toy store owner, and Bess, f urious wit

h Steve for having misledher, stor ms out. Having put

Tommy, who is full of c onfidenc e that he is goingto receive an Action Man figure, to bed and inspired by

a drawing Tommy has m ade o f an Acti on Man fig ure, Be ss decides to break into Clare’s home and retriev e the toy she had stashed away. Be ss, we aring c amoufla ge fac e paint, i s surp risedb y Clare, who mistakes he r for the Night Prowler,

a burglar who has been plaguing the neig hborhood, but Bess manages to escape with t he Action Man figure. The following day, B ess and he r mother have a kit

chen-ta ble conversation. Bess, in despair over her financial situation, the imminent e

viction, a nd the fa ct that she

is a thief , decide s to return the A ction Man fig

ure. Af ter Bes s is gone , Tommy shows his grandmother the cereal-box tops he has co llected t o redeem for an Action M an figure and sh e decid es to f orego playing the

lottery and re deem the box tops instead.

When Bess ar

rives at Clare ’s house, Clare and Eric are having a discussion on the wisd om of Clare’s plans to evict poor te nant s in order to make room for her development project

. As Bess t ries to re turn the Action Man

figure toNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 19

Clare ’s stash , Clare c omes upon her and f or the fir st time notices that

her cleaning woman is thewoman with whom she struggled in the toy store. I n the ensuing melee, Bess drops the action figure and flees the sce ne. Back at

home, Clare again talks about Steve with her mother. The winning lottery numbers are announced and Bess’s mother realizes that she would have won

had she p layed that da

y. A t this mo ment, police officers enter and arrest B ess for being the Night Prowler.
Enraged, Bess’s m

other he ads to Clare’s

home and berates her in front of

her party guests for having had

Bess arrested. After the party is over, Clar

e proceeds to a local church where she, dressed in a Santa Claus suit, hands outpresents to poor children. After listening to the local priest describe the

c hildren’ s plight, she has a change of he art. She returns home, collects

all the pr esents under her Christmas tree, and distributes them to the po or c hildren a t a local h

omeless shelter. Meanwhile, B ess is released on bail, raised by her kindly neighb or, and E

ric apprehends the real

Night Prowler. Clare, having discovered her error in identifying B ess as the Night Prowler, heads to Bess’s apartment where she tears up the eviction notice. She also of fers Bess an Action Man figure, but Bess, realizing that her son ne eds his mother, not

a toy, declines the gift. The following mornin g, Tommy is understandingabout

not receiving an Action Man figur e and Bess reconc ile s with Steve. Tommy discovers another present , an Actio n Man f igure after all, and for the lac k of a better explanation, concludes that the real Santa must have brought it. As credits ro ll, a trio of Santas are seen walking towards the homeless shelter. In the final imag e of th e proposed movie, the Santas turn around and reveal one to be black, one to be white, and one to be Japanese.
The protagonist of the JATWmovie is Howard Lang ston, the workaholic CEO of a mattress company

. Howard has promised his eight-ye ar- old son Jamie that he would attend 20 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

the ceremony

at whichJamie is to be awa rded his p urple be lt inkarate. Having been detaine d at the of fic e by business calls, Howard s

peeds to t he cere mony , but is caught

by police officer Hummel and as a consequence misses the award

ce re mo ny. Howard’ s wife L iz instead attends the ceremony with their divorced neighbor, the oleaginous Ted, whose son also receiv es a belt

at the ce remony . The next morning, i n order to r eturn himself in

to the go od gra

ces of the deeply d isappoi nted

Jamie, Howard promises to buy him a Turbo Manaction figure for Christmas. After this prologue , the actionskips forward to the morning of Christmas Eve at the Langston’swell-appointed home. Liz asks Howard whether he bought the Turbo Man figure. Howard, who had forgotten, nevertheless claims he did. Howard l eaves, a ccordin g to him inorder to

pick up the

toy from his o ffice, but not before promis ing Jamie that he will attend a Christmas parade at which Turbo Man is scheduled to appear.

Howard begins his frantic search for the Tur bo Man action fig ure at a local toy store. He re he meets My

ron Larabee , a stressed-out

black ma ilman, who

also is try ing to make a la stminutepurchase of a Turbo Man figur e for his son. When Howard and My

ron ask store clerks for

a Turbo Man figure, t hey are laughed at for expecting to be able to find thi s extremely popular toy

at such a late date. After driving from store to store without success, Howard overhears that a store at a l ocal mall just received a late shipment of Turbo Man figure s. In his haste to get to the mall , Howard runs over Hummel’s motorcycle. Hummel is notamused. A t the mall, when the toy store cle rks try to distribu

te numb ered balls to establish priority for the limited quantity of Tur bo Man figure s, a riot breaks out. After Howard a

nd My ron strug gle

acrossthe mall for one of the balls, Howar d overcomes Myr on only to lose the

ball to an infant.

A suspicious-looking mall Santa offers to take the dejected Howard to a secret warehouse where Turbo Man

figures areNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 21

still available. At the warehouse, filled with Sant a Clause s and elves, Howard

pays $300 for

a Turbo M an figu

re, only to have it revealed as a poorly made forei gn knock-off, which promptly falls apart in his hands. Before Howard c an complain, the polic e raid th e ware house and arrest the Santas and elves. H oward ba

rely escape s b y using a toy police identificationbadge. How ard’ s SUV, parked outside the wareho use, has b een strip

ped clea n by thieves.

Howard and Myron run into ea

ch other again in a coffee shop and commi serate . My ron expla ins to Howard h

ow all his life’s misfortunes ar e tracea ble to not re ceivi ng a particular popular toy

when he was a child. A radio play ing inthe co ffee sh op ann ounce s a call -in co ntest offeri ng a Turbo Man figure to the fi rst pers on to name all of Santa’s

re indeer. Myron and Howa rd fight over the local pay phon e butonly manag e to break it. Instead, they start running to the nearby radio station. Howard, being in much better physica

l condition th an th e p or tl y Myr on, arri ves first at the station and breaks i

nto the br

oadcast booth of the prog

ram’s ho st

. Sho rtly afterwards, My

ron too breaks into the booth an d threatens to blow it up using a mail bomb he carries unless he is given the Turbo Man figure. When the host reveals that he

was only offering

a gift certificate, Howar

d leaves, but Myron drops the “bomb ” which tu rns out to b e only

a regu lar Christmas package. On the way out of the station, Myron is apprehended

by a po li ce SW AT te am , l ed by Hu mmel, but manages to escap e by

using an other ma il bomb. Thi s bomb does explode, leaving Hummel comically singed.

Howard returns ho me defe ated, but sees Ted

and L iz decorating

his Christmas tree. Jealous and enraged, Howard breaks into Ted’ s house tosteal the Turbo Man figure that Ted had bragged about buy ing for his son. Inside Ted’ s house, Howard i s attacked by Ted’s pe t reinde er, acc identally sets fire to several rooms, and is ultimately discovered by

Ted and Liz while holdi ng the stol en Tu

rbo M an fi gur

e. L iz, 22 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

disgusted with Howard’s behavior, leaves for the parade with Jam ie, Ted, and

Ted’s son . After d

ropping off the c hild ren , Ted attempts to kiss

Liz
, who violently rebuffs his advan

ces. Meanwhile, Howard shares some bee rs with the reindeer and also heads for the parade. There Howard, mistaken for th e actor hi red to play Turbo Man, is put into a high-tech Turbo Mancostume, put

on a float, and given a special Turbo Man action figure to present to the attending c hild of his choice.
At the par

ade, Howard/Tur

bo Man spo ts Jamie, who does notreco gniz e him, in

the crowd and gives him the Turbo Man figure. At this point, Myron, who has stolen the costume of Dementor, Turbo Ma

n’s neme sis, attac

ks Howar d and Jamie with intent to steal the fig ure . In a special-effects-heavy fight between Howard/Turbo Man and

Myron/Dementor, e choing

anepisode of the Turbo Man televisionprogram glimpsed at the beginning of the movie, Howard def eats Myron. Af

ter the fight, Howard reveals himself to Jamie. Jamie realizes that because he has the real Turbo Man for a father he does not need the action figure and gives the f ig ure to Myron. Howard, Liz, a

nd Jamie embrace a

nd credi ts roll. In a

postcredit scene, L

iz wonders

what How ard boug

ht her for Christmas and

the horr ified Howard rea

lizes that he forg ot to buy her a pr esent.

V

Most of the issu

es that form t

he basis of a copyr

ight infringement

claim ar e no long er in

dispute in this case. The CTBC screenplay was copyrighted. Fo x did h ave acc ess to the CTBC sc reenp lay befor e it registered the JATW screenplay

and before production of the JATW movie, butnot before it received the JATW “treatment.” Finally , the jury found that the JATW movie and the CTBC screenplay were substantia lly s imil ar, establishing Murray Hill’s copyrig

ht infringement

claim. Fox appeals on the basis of the denial of its pre- and post-verdict motions for judgment as a matter

ofNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 23

lawon the issue of substantial similar ity. “ Judgment a s a matter of law is a

ppropria te only when the

re is a c omplete absence of

fact to support

the verd ict, so tha t no reas onable juror co ul d h av e f

ou nd fo r t he no nm ov in g p ar ty. ” Fisher v. Ford Motor Co. , 224 F.3d 570, 574 (6th Cir. 2000) (quoting Moore v. KUKA Welding Sys. &

Robot Corp. , 171 F.3d 1073, 1078 (6th Cir. 1999)).

Fox’s principal basis for requesting judgment as a matter of lawis the six-page “treatment” that Kornfield reg istered prior to the ti me that Murray H ill could establish, directly or infere ntially by m eans of

striking similarity, that Fox had

access to the CTBC screenplay . At trial, Murray H ill pressed several theo riesabou

t how F ox co uld have gained ac cess to the CTBC screenplay

earlier, but

the district court found that thesethe ori es were too speculative to establish access and Murray Hill does not appeal this finding. As we noted above, striking similarity

, preclu ding all possible conclusion but

that the work was

c opied, can subst

itute for proof of access

. Howe ver, even a superficial glance at the CTBC screenplay and the JAT W treatment reveals that whatever the similariti es, they

most c ertainl y do not approac h the level precludingall possibilities but copying. Theref ore, the districtcourt rightly

found that the tre atm ent was an independent creation.
Murray Hill’s claim of substantial similarity between the JATW movie and

the CTBC scr

eenplay rested on an exper

tprepared list of twenty-four

si milarities between the two. However, of these twenty- four similariti es, all bu

t six already existedin the inde

pendentl y created treatme nt. Thus, only those six element s could pos s ibl y have be en taken by F ox fromthe CTBC screenplay . These six remaining similarities

were the ch ildre n’s dr awings (of Acti on Man in CTBC and of the Lang ston famil

y in JATW), the unhelpful toy storeclerks (refusing to give the toy

to Bess in CTBC and laughing at H oward’s late request for the toy in JATW), the intrus iv e 24 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

neighbor (a minor symp athetic

character in CTBC an

d Ted in JATW), and three s imilar ities in the theft of the toy (fr om Clare by Bess in CTBC and from Ted by Howard in JATW). Each of these similarities is tenuou s. At th e level of actual expression they

differ s ignif

ica ntly, and at any

level of abstract io nthat covers both JATW and CTBC, they are ubiquitous inliterature and the cine ma. We ar

e instructed to look at su ch slight similarities holistically to determine whether coll ec ti ve ly t he y co ul d p ro ve su bs ta nt ia l s im il ar it y. Where, as here , the slig

ht si milaritie s are not

thematic ally related, the whole is no greater than the sum of the pa rts. Therefore, if the court

was req uired to f ilter out a ll the other similariti es, summ ary judgm ent fo r Fox would have been appropriate.
Contrary to the par

ties’ equ ally ferven t, though otherwis e diametri cally

opposed, assertions, the question of whether elements already found in a copyrig

ht defendant’s earlier, non-inf r ingingwork are properly discounted in performing substantia l similarit y a naly sis is, at least i

n this cour

t, one of first impression. The canonical statement of law is tha

t nonprotectib le elemen ts must be fil tered ou t. Kohus , 328 F.3d at 855. B ut here t

he arg ument is no t that the e ighte e n similarities allegedly

shared by the

CTBC screenp lay , the JATW movie, and

the JATW treatment were no n-protec tible, butrather that the se elements were independently created. We tu rn to persuasive precedent and rea son to determine whether independ ently created elements must be discounted.

Precede nts in our s iste r circuits suggest that under appropr iate circumstances even

protectible elements may be filtered out. In Apple Computer v. Microsoft Corp. , 35 F.3d 1435 (9th Cir. 1994), Apple filed suit alleging that elements of Mi crosoft’s graphical user interf ace infringed on the copyrig htof Ap pl e’ s e qu iv al en t s of tw ar e. Si gn if

ic an tl y, Microsoft had obtained a license from Apple for some, but notall, elem en ts of Apple’s software. The court stated thatNos. 01-2668/2721 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. 25

“[w]h ere, as here, the accused works include both license d and unlicens ed feat

ures, infringement will depend on whether the unlicensed features are entitled to protection.” Id. at 1441. “Beca use only those elements of a w ork that are p rotectib le and used wi thout the author’s permission can be compared when it comes to the ultimate question of illicit copying, we

use an al yti c d is se ct io n t o d et er mi ne th e s co pe of co pyr ig ht protection before works are considered ‘as a whole.’” Id. at 1443 (citations omitted). In so concluding , the Apple court extended the application of

filt ering, from unpr

otectible elements to protect

ible elements used

with the permission of the copyrig

ht owner.

In Sturdza
, an architect

brought a claim against the United Arab Emira tes al leging t hat th e desi gnof the defendant’s new embassy infri nged on the co pyright of archit ectura l draw ings sh e had previously submitted to the defe ndant. 281 F.3d a t 1291-92. The defendant contended that the design was in fact based on the work submitted by another architect. Ibid. The districtcourt in p erformi

ng the su bstantial -similari

ty a naly sis discounted

elements of the embassy desig n that were already present in work submitted

by the other architect before the defendant had access to the plaintiff’s drawings. Id. at 1297. Becau se the plaintiff did not appeal this discounting, th e District of Columbia Cir

cuit also excluded the elements that were already

present in the earlier work. Ibid.
Log ic also supports the filtering of indepe nde ntly-crea ted elements

. Th e p ur po se of th e s ub st an ti al -s im il ar it y a naly sis is to answer the question whether the defendant copie d the work of the plaintiff. Ordinarily , similar elements between knownwork of the plaintif f and the defenda nt’s work will, dependingonthe degree of uniqueness and originality of the element, support such an infer ence. However, where defendant owns a prior w ork conta ining the same ele ments, he has no reason, bey

ond the illicit thri ll of copyrig ht infring ement, to copy

wrongf ully from another what he could 26 Murray Hill Pub., Inc. v. Twentieth C

entury Fo x Film Corp. Nos. 01-2668/2721

legall y copy from himself. The refore, where an eleme

nt

occurs both in the defendant’s prior work and the plaintiff’s prior work, no inference of copy ing can be d rawn. See Sheldon v. Metro-Goldwyn Pictures Corp. , 81 F.2d 49, 54 (2d Cir. 193 6) ( “If

the defendant has had access to other material whichwould hav e serve d him as we ll , h is disclaimer [of copying] becomes

more pla us ible.”) ; Ellis , 177 F.3d at 507 (“[A ]ninfere

nce of c opy

ing is r ebuttable by evide nce of independent

creation of the allegedly infringing work.”) (citations omitted). Such elements shoul d be removed from consideration.
Therefore, we hold that e lementsof a copyr ight defendant’s work that wer e crea ted prior to acce ss to a

plaintiff’s work are to be filter

ed out at t

he first s tage of

substa ntia l-similar

ity analy sis, just as

non-prot ectible e lementsare. In the present

c ase, no reasonable jury could have found substantial similarity solely on the bas is of the six minorelements not so filtered. Therefore, Fox’s motion for judgment as a matter of law should have been granted.

VI

For the foregoing reasons, we REVERSE the judgment of the district court and REMAND for an entry of judgment as a mat ter o f law in fa vor o f Fox.