*

The Honorable Walter Herbert Rice, United States District Judge for

the Southern District of Ohio, sitting by designation.

1

RECOMMENDED FOR FULL-TEXT PUBLICATION

Pursuant to Sixth Circuit Rule 206

ELECTRONIC CITATION: 2004 FED App. 0082P (6th Cir.)

File Name: 04a0082p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

_________________

MURRAY HILL PUBLICATIONS,

INC.,

Plaintiff-Appellee/

Cross-Appellant,

v.

TWENTIETH CENTURY FOX

FILM CORPORATION,

Defendant-Appellant/

Cross-Appellee.

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Nos. 01-2668/2721

Appeal from the United States District Court

for the Eastern District of Michigan at Ann Arbor.

No. 97-60405—Marianne O. Battani, District Judge.

Argued: August 7, 2003

Decided and Filed: March 19, 2004 

Before: BOGGS, Chief Judge; SILER, Circuit Judge; and

RICE, District Judge.*

2 Murray Hill Pub., Inc. v.

Twentieth Century Fox Film

Corp.

Nos. 01-2668/2721

_________________

COUNSEL

ARGUED: Louis P. Petrich, LEOPOLD, PETRICH &

SMITH, Los Angeles, California, for Appellant. Mayer

Morganroth, MORGANROTH & MORGANROTH,

Southfield Michigan, for Appellee. ON BRIEF: Louis P.

Petrich, LEOPOLD, PETRICH & SMITH, Los Angeles,

California, Maria N. Bernier, Gregory B. Jordan, REED &

SMITH, Pittsburgh, Pennsylvania, Laurie J. Michelson,

BUTZEL LONG, Detroit, Michigan, J. Michael Huget,

BUTZEL LONG, Ann Arbor, Michigan, for Appellant.

Mayer Morganroth, Jeffrey B. Morganroth, Jason R. Hirsch,

MORGANROTH&MORGANROTH,Southfield,Michigan,

for Appellee.

_________________

OPINION

_________________

BOGGS, Chief Judge. Twentieth Century Fox Film

Corporation (“Fox”) appeals following a jury verdict in favor

of plaintiff, Murray Hill Publications, Inc. (“Murray Hill”), in

its action for copyright infringement. During the creation of

the movie “Jingle All The Way” (“JATW”), Fox received

from Murray Hill a submission of the screenplay for “Could

This Be Christmas” (“CTBC”). After the theatrical release of

JATW, Murray Hill sued Fox, alleging that the JATW movie

infringed upon its copyright of the CTBC screenplay. At

trial, both Fox and Murray Hill presented expert evidence to

establish whether the JATW movie was substantially similar

to the CTBC screenplay. After the jury returned a verdict for

Murray Hill, the district court disallowed damage items

representing the bulk of the jury award and denied attorney’s

fees to Murray Hill. On appeal, Fox argues that it was
Nos. 01-2668/2721 Murray Hill Pub., Inc. v.

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3

entitled to summary judgment on the issue of substantial

similarity, that the trial was tainted by improper expert

testimony by Murray Hill’s expert witness and by misleading

jury instructions, necessitating a new trial, and that the

damages awarded were unsupported in law or fact. Murray

Hill cross-appealed and argues that it was entitled to the full

damages awarded by the jury and also to attorney’s fees. We

reverse because Fox was entitled to judgment as a matter of

law. We do not reach the issues of the expert evidence, the

jury instructions, the attorney’s fees, or the damages.

I

The principal author of the JATW screenplay was Randy

Kornfield, a Fox script reader and freelance writer of

screenplays. In 1993, Kornfield tried to buy a Mighty

Morphin’ Power Ranger action figure as a birthday present

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

conversations with other parents similarly engaged gave

Kornfield the idea for a screenplay. On January 11, 1994,

Kornfield registered his “treatment,” a six-page summary of

a proposed screenplay, then called “A Christmas Hunt,” with

the Writer’s Guild of America. On July 17, he registered a

fleshed-out screenplay of this treatment. Executives at the

Fox Searchlight division liked the screenplay and bought it

for “1492 Pictures,” a production company affiliated with

Fox. From November 1994 through June 1995, Kornfield

worked with Fox and 1492 Pictures to revise the screenplay.

In November 1995, Fox hired two more scriptwriters to

continue editing and enhancing the screenplay. During this

editorial process, the screenplay acquired the JATW title.

The author of the CTBC screenplay was Brian Webster, a

Detroit school teacher and aspiring script writer. In 1988,

inspired by his difficulties in obtaining a Golden Batman as

a Christmas present for his son, Webster wrote the first draft

of a screenplay, initially entitled “Action Man: The Toy,”

4 Murray Hill Pub., Inc. v.

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Nos. 01-2668/2721

then “So This Is Christmas,” and finally “Could This Be

Christmas.” Webster first registered this screenplay with the

Copyright Office in 1989 and re-registered it in 1991. From

1989 through 1993, Webster and his agent made repeated

attempts to sell this screenplay to a variety of potential

producers. While Murray Hill pleaded a number of theories

on how the screenplay could have found its way to Fox

during this period, the district court considered all of the

theories too speculative and found that Fox did not have

access to the CTBC screenplay during this period. Murray

Hill does not raise this issue on appeal. Significantly, on

February 4, 1994, Webster sold an option to CTBC to Murray

Hill and eventually transferred 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 performed the same task for

the JATW screenplay. On August 1, Fox declined the CTBC

screenplay. After Fox declined the screenplay, Murray Hill

made no further attempts to sell it.

At some time in February 1996, Robert Laurel, the

principal of Murray Hill, read an article in Daily Variety

about the JATW movie then in production. Concerned about

the apparent similarities between JATW and CTBC, Laurel

contacted his attorneys, who sent a series of cease-and-desist

letters to Fox. Early settlement negotiations between Fox and

Murray Hill failed over Murray Hill’s unwillingness to

commit to any particular theory of how and when Fox could

have obtained access to the CTBC screenplay and Fox’s

refusal to share some of its information until Murray Hill

committed to such a theory. Nevertheless, Fox proceeded

with the JATW movie. On November 22, 1996, the movie

was released and quickly proved to be a commercial success.
Nos. 01-2668/2721 Murray Hill Pub., Inc. v.

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5

1

The earlier finding did not preclude all possibility that the JATW

treatment infringed, because Murray Hill had argued that the alleged

“striking similarity” between the CTBC screenplay and the JATW

treatment established access inferentially.

As of December 2000, the JATW movie had earned $183

million.

On December 3, 1997, Murray Hill filed suit against Fox in

the United States District Court for the Eastern District of

Michigan. While this complaint alleged a multitude of

theories of liability, the only claim still relevant is Murray

Hill’s allegation that the JATW movie infringed upon the

copyright of the CTBC screenplay. The court made a finding

that Murray Hill failed to establish directly that Fox had

access to the CTBC screenplay at any time before Murray

Hill submitted it to Fox. The case then proceeded to trial by

jury. The district court instructed the jury based on the Ninth

Circuit’s test for judging the “substantial similarity” of

copyrighted works. As the jury was deliberating, the court

found that the JATW treatment, created prior to the CTBC

submission, did not infringe on the CTBC screenplay.

1

However, the jury was not informed of this ruling. Four days

later, the jury rendered a verdict in favor of Murray Hill. The

damages included $1 million in producer’s fees and $500,000

in writer’s fees that Murray Hill lost because Fox did not

contract with it for these services, $2 million in lost goodwill,

and $500,000 in merchandising revenue Fox earned from the

sales of a JATW sound track and toys. While the jury found

that JATW had not yet earned any profits for Fox, it estimated

Fox’s future profits on JATW at $15 million and also

awarded that amount to Murray Hill. Accordingly, the

district court entered judgment in favor of Murray Hill in the

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

a matter of law and also moved for new trial. The court

granted Fox’s motion for judgment as a matter of law with

6 Murray Hill Pub., Inc. v.

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Nos. 01-2668/2721

respect to all damage items except the producer’s and writer’s

fees, thus reducing the award to $1.5 million. The court also

declined to award attorney’s fees to Murray Hill and entered

judgment in the reduced amount. Before this court now are

Fox’s timely appeal and Murray Hill’s timely cross-appeal.

II

To determine whether the district court erred in allowing

this case to go to the jury, we must look both at the

developing law of copyright as it addresses the elements of

proof for copyright infringement, and to the specific elements

of the two works before us. We will first lay out the

framework of law, as our circuit has pronounced it (Part III);

then describe the dramatic elements of the two works (Part

IV); and, finally, apply the law to an assessment of the

relation of the protectible elements of the copyrighted work

to the overall tenor of the allegedly infringing work (Part V).

III

Title 17 of the United States Code protects owners’

copyrights in creative works. 17 U.S.C. §§ 101-1332.

Copyright owners have the exclusive right to reproduce the

protected work, to prepare derivative works, and to distribute

copies to the public. 17 U.S.C. § 106(1)-(3). In the case of

infringement, the owner of a copyrighted work may seek

injunctive relief, impoundment and disposition of the

infringing articles, damages, infringer’s profits, and legal

costs, including attorney’s fees. 17 U.S.C. §§ 502-505. “To

succeed in a copyright infringement action, a plaintiff must

establish that he or she owns the copyrighted creation, and

that the defendant copied it.” Kohus v. Mariol, 328 F.3d 848,

853 (6th Cir. 2003); see alsoFeist v. Rural Tel. Serv. Co., 499

U.S. 340, 361 (1991). “However, in most cases courts have

no objective evidence of the process by which the challenged

object was developed and thus are forced to rely on the
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7

inferences which may be drawn from two basic facts: access

and similarity.” Glanzmann v. King, 8 U.S.P.Q.2d 1594,

1595 (E.D. Mich. 1988) (citing Ideal Toy Corp. v. Kenner

Prods., 443 F. Supp. 291 (S.D.N.Y. 1977)). “[W]here there

is no direct evidence of copying, a plaintiff may establish ‘an

inference of copying by showing (1) access to the

allegedly-infringed work by the defendant(s) and (2) a

substantial similarity between the two works at issue.’”

(emphases added). Kohus, 328 F.3d at 853-54 (quoting Ellis

v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999)). “Thus, copying

is an essential element of infringement and substantial

similarity between the plaintiff’s and defendants’ works is an

essential element of copying.” Wickham v. Knoxville Int’l

Energy Exposition, 739 F.2d 1094, 1097 (6th Cir. 1984)

(citations omitted).

The access element of a copyright infringement claim is

usually the less problematic. “Access is essentially ‘hearing

or having a reasonable opportunity to hear the plaintiff[’s]

work and thus having the opportunity to copy.’” Ellis, 177

F.3d at 506 (quoting Tree Publ’g Co. v. Warner Bros.

Records, 785 F. Supp. 1272, 1274 (M.D. Tenn. 1991)).

“Access is proven when the plaintiff shows that the defendant

had an opportunity to view or to copy plaintiff’s work.”

Glanzmann, 8 U.S.P.Q.2d at 1595 (citing Sid & Marty Krofft

Television Prods. v. McDonald’s Corp., 562 F.2d 1157, 1163

(9th Cir. 1977)). “Although ‘evidence that a third party with

whom both the plaintiff and defendant were concurrently

dealing had possession of plaintiff’s work is sufficient to

establish access by the defendant,’ ‘[a]ccess may not be

inferred through mere speculation or conjecture.’” Ellis, 177

F.3d at 506 (quoting 4 Melville B. Nimmer & David Nimmer,

Nimmer on Copyright § 13.02[A] (hereinafter “Nimmer”)).

“A mere assertion of access, unsupported by probative

evidence is inadequate.” Glanzmann, 8 U.S.P.Q.2d at 1595

(citing Scott v. Paramount Pictures Corp., 449 F. Supp. 518,

8 Murray Hill Pub., Inc. v.

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520 (D.D.C. 1978), aff’d, 607 F.2d 494 (D.C. Cir. 1979)).

“Nor is a ‘bare possibility’ of access sufficient. A plaintiff

must establish that defendant(s) had a ‘reasonable possibility’

to view plaintiff’s work.” Glanzmann, 8 U.S.P.Q.2d at 1595

(citing Meta-Film Assocs. v. MCA, Inc., 586 F. Supp. 1346,

1355 (C.D. Cal. 1984)). See also Grubb v. KMS Patriots,

L.P., 88 F.3d 1, 4 (1st Cir. 1996) (denying copyright

infringement claim on design of football team’s logo where

alleged infringer had largely completed his design before

access to plaintiff’s design).

Where the plaintiff cannot prove access, the copyright

infringement claim can still succeed, but only by proof of a

higher level of similarity than the merely substantial. See

Ellis, 177 F.3d at 507 (noting that “[s]ome case law indicates

that the stronger the similarity between the two works in

question, the less compelling the proof of access needs to be”

(citing Nimmer § 13.02[B])). The quantum of similarity that

will substitute for proof of access is “striking similarity.”

Such striking similarity “preclude[s] the possibility of

independent creation.” Glanzmann, 8 U.S.P.Q.2d at 1595

(citing Ferguson v. Nat’l Broad. Co., 584 F.2d 111 (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 carries the

burdens of proof that the infringing work is sufficient similar

as to intrude into the copyrighted work’s protection and that

the defendant must have had access to the copyrighted work,

even if the plaintiff can provide no extrinsic proof of that fact.

In the usual infringement case, access can be shown and the

more difficult proof is that of “substantial similarity.” In

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 observer’

or ‘audience’ test, which ‘requires the trier of fact to gauge

the similarities of the two works solely on the basis of his ‘net
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impression’ and without relying on expert analysis or

dissection.’” Ibid. (citing Ellis, 177 F.3d at 506 n.2).

“[C]ourts have undertaken various modifications—typically,

by adding a prior step that does allow expert testimony and

analytic dissection.” Kohus, 328 F.3d at 854. 

The Second Circuit has adopted a test that distinguishes

between two essential elements in a substantial similarity

suit–“(a) that defendant copied from plaintiff’s copyrighted

work and (b) that the copying (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 part, but not under the second

because “the determination of improper copying is to be made

from the viewpoint of the ordinary observer.” Kohus, 328

F.3d at 854 (citing Arnstein). The Ninth Circuit, the court of

appeals with the largest case load and experience in the area

of movie industry copyright infringement, has adopted an

alternative two-part test. This test consists of an “‘extrinsic

test,’ in which expert testimony and analytic dissection may

be employed to help the jury ‘determine whether there has

been copying of the expression of an idea rather than just the

idea itself’ . . . and the ‘intrinsic test,’ in which expert

testimony is not appropriate because the trier of fact must

determine substantial similarity from the viewpoint of the

ordinary reasonable person.” Kohus, 328 F.3d at 854

(summarizing Krofft, 562 F.2d at 1163-64). While these

names for the parts have remained, “[b]ecause the criteria

incorporated into the extrinsic test encompass all objective

manifestations of creativity, the two tests are more sensibly

described as objective and subjective analyses of expression,

having strayed from Krofft’s division between expression and

ideas.” Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir.

1990) (citations omitted). The extrinsic test focuses on

articulable similarities between plot, themes, dialogue, mood,

setting, pace, characters, and sequence of events in the two

10 Murray Hill Pub., Inc. v.

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works. Kouf v. Walt Disney Pictures & Television, 16 F.3d

1042, 1046 (9th Cir. 1994). “[S]atisfaction of the extrinsic

test creates a triable issue of fact in a copyright action

involving a literary work.” Shaw, 919 F.2d at 1359.

This court, however, had until recently not adopted any of

the refined versions of the substantial similarity test. Ellis,

177 F.3d at 506 n.2. Lacking guidance, the district court in

the present case adopted the Ninth Circuit test. However,

while this appeal was pending, we, in Kohus, adopted the

District of Columbia Circuit’s test. In this test “the first step

‘requires identifying which aspects of the artist’s work, if any,

are protectible by copyright,’ the second ‘involves

determining whether the allegedly infringing work is

‘substantially similar’ to protectible elements of the artist’s

work.’” Kohus, 328 F.3d at 855 (quoting Sturdza v. United

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 Circuit test. See Kohus, 328 F.3d at 855 n.1

(tracing history of the Sturdza test). The second part of our

test, and the Ninth Circuit’s intrinsic test, both address the

question of whether the two works are, taken as a whole,

substantially similar in look and feel to a jury. The first part

of our test, and the Ninth Circuit’s extrinsic test, both require

a determination of what elements of the copyrighted work are

protected by the law and an exclusion of consideration of all

elements that are not. 

However, significant differences remain in both parts. In

particular, we apply a more stringent standard regarding when

to allow expert testimony on the first part of the test. Also,

not having adopted the eight Kouf factors, the first part of our

test remains more free in form than the Ninth Circuit’s

extrinsic test. “The essence of the first step is to filter out the

unoriginal, unprotectible elements . . . through a variety of

analyses.” Kohus, 328 F.3d at 855 (citing Feist, 499 U.S. at

345).
Nos. 01-2668/2721 Murray Hill Pub., Inc. v.

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2

Of the two principles, that ideas are not protectible and that

expressions are protectible, it is the former that is the stronger. Where an

idea by necessity, or near-necessity, or custom, leads to a particular

expression, it is the expression which becomes unprotected, rather than

the idea that becomes protected. To reach the opposite conclusion would,

through the backdoor, create a forbidden copyright in ideas. Shaw, 919

F.2d at 1360.

This brings us to the most complex part of the substantial

similarity inquiry: the determination of which parts of the

original work are protectible and which are not. It is

“impossible to articulate a definitive demarcation that

measures when the similarity between works involves

copying of protected expression; decisions must inevitably be

ad hoc.” Shaw, 919 F.2d at 1356 (citing Krofft, 562 F.2d at

1164). Nevertheless, certain categorical judgments and

guideposts have been established. Unoriginal work enjoys no

copyright protection. “The sine qua non of copyright is

originality. To qualify for copyright protection, a work must

be original to the author.” Feist, 499 U.S. at 345. “[I]t is a

constitutional requirement that a plaintiff bringing an

infringement claim must prove ‘copying of constituent

elements of the work that are original.’” Kohus, 328 F.3d at

853 (emphasis added in Kohus) (quoting Feist, 499 U.S. at

361). However, “the requisite level of creativity is extremely

low; even a slight amount will suffice. The vast majority of

works make the grade quite easily, as they possess some

creative spark, ‘no matter how crude, humble or obvious’ it

might be.” Feist, 499 U.S. at 345 (quoting 1 Nimmer,

§ 1.08[C][1]).

In the general run of cases, where minimal creativity can be

shown, the vital distinction is between ideas and their

expressions. Copyright does not protect ideas, but only the

expression of ideas. Kohus, 328 F.3d at 855.2 “The real task

in a copyright infringement action, then, is to determine

12 Murray Hill Pub., Inc. v.

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whether there has been copying of the expression of an idea

rather than just the idea itself.” Krofft, 562 F.2d at 1163.

“[N]o one infringes, unless he descends so far into what is

concrete [in a 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 between ideas and their

expressions, courts use the abstraction test first described by

Judge Learned Hand with respect to a theatrical play. Kohus,

328 F.3d at 855.

Upon any work, and especially upon a play, a great

number of patterns of increasing generality will fit

equally well, as more and more of the incident is left out.

The last may perhaps be no more than the most general

statement of what the play is about, and at times might

consist only of its title; but there is a point in this series

of abstractions where they are no longer protected, since

otherwise the playwright could prevent the use of his

‘ideas,’ to which, apart from their expression, his

property is never extended.

Nichols v. Universal Pictures 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 idea-like. It

does not pick the point on the spectrum at which elements

cease to be unprotected ideas and become protectible

expressions. Nevertheless, it serves as a useful, if not

dispositive, analytical tool in drawing these distinctions. See

Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489

(2d Cir. 1960) (noting that “no principle can be stated as to

when an imitator has gone beyond copying the ‘idea,’ and has

borrowed its ‘expression’” and that such decisions hence must

“inevitably be ad hoc”).

Within the realm of works of fiction, literary or

cinematographic, expressions not protectible because they

follow directly from unprotectible ideas are known as scènes
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à faire, “those elements that follow naturally 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 which are as a

practical matter indispensable, or at least standard, in the

treatment of a given topic.” Sturdza, 281 F.3d at 1295. A

few examples provide concreteness to this definition:

If Twelfth Night were copyrighted, it is quite possible

that a second comer might so closely imitate Sir Toby

Belch or Malvolio as to infringe, but it would not be

enough that for one of his characters he cast a riotous

knight who kept wassail to the discomfort of the

household, or a vain and foppish steward who became

amorous of his mistress. These would be no more than

Shakespeare’s ‘ideas’ in the play, as little capable 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

copyrighted; that is the penalty an author must bear for

marking them too indistinctly.

Nichols, 45 F.2d at 121. Other genres provide additional

examples of scènes à faire. “Elements such as drunks,

prostitutes, vermin and derelict cars would appear in any

realistic work about . . . policemen in the South Bronx” and

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 familiar

figure of the Irish cop, are venerable and often-recurring

themes of police fiction,” and hence not protectable. Ibid.

“While both the Dinosaur World books and the Jurassic Park

works share a setting of a dinosaur zoo or adventure park,

with electrified fences, automated tours, dinosaur nurseries,

and uniformed workers, these settings are classic scenes a

faire that flow from the uncopyrightable concept of a dinosaur

zoo. Thus, though perhaps substantially similar, the settings

14 Murray Hill Pub., Inc. v.

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are not protectible.” Williams v. Crichton, 84 F.3d 581, 589

(2d Cir. 1996). “The common use of such stock . . . merely

reminds us that in Hollywood, as in the life of men generally,

there is only rarely anything new under the sun.” Id. at 588

(quoting Berkic v. Crichton, 761 F.2d 1289, 1294 (9th Cir.

1985)). 

Another question of degree in the evaluation of substantial

similarity is the amount of copying necessary to establish

infringement. At the extremes, the rules of law are again

clear. “Duplication or near identity is not necessary to

establish infringement. ” Krofft, 562 F.2d at 1167 (citing

Runge v. Lee, 441 F.2d 579, 582 (9th Cir. 1971), and

Williams v. Kaag Mfrs., 338 F.2d 949, 951 (9th Cir. 1964)).

“A story has a linear dimension: it begins, continues, and

ends. If a defendant copies substantial portions of a plaintiff’s

sequence of events, he does not escape infringement by

adding original episodes somewhere along the line.” Warner

Bros. v. ABC, 720 F.2d 231, 241 (2d Cir. 1983). “The

misappropriation of even a small portion of a copyrighted

work . . . may constitute an infringement under certain

circumstances.” 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 copied portion be relatively small in proportion to

the entire work, if qualitatively important, the finder of fact

may properly find substantial similarity.” Baxter v. MCA,

Inc., 812 F.2d 421, 425 (9th Cir. 1987). “No plagiarist can

excuse the wrong by showing how much of his work he did

not pirate.” Shaw, 919 F.2d at 1362 (quoting Nimmer,

§ 13.03[B][1][a]). However, “individual lines of dialogue [in

a movie] are not automatically entitled to copyright

protection.” ABC, 264 F.3d at 632. “[W]hen a single line of

a larger copyrighted work is appropriated by an alleged

infringer, the test is whether ‘the work is recognizable by an

ordinary observer as having been taken from the copyrighted
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source.’” Id. at 633 (quoting Harold Lloyd, 162 F.2d at 361).

“[I]t is the combination of many different elements which

may command copyright protection because of its particular

subjective quality.” Krofft, 562 F.2d at 1169 (citing Reyher

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 the over-all impact and effect indicate substantial

appropriation.” Krofft, 562 F.2d at 1169 (quoting Malkin v.

Dubinsky, 146 F. Supp. 111, 114 (S.D.N.Y. 1956)).

However, “random similarities scattered throughout the

works” can be discounted. Litchfield v. Spielberg, 736 F.2d

1352, 1356 (9th Cir. 1984). “Such a scattershot approach

cannot support a finding of substantial similarity because it

fails to address the underlying issue: whether a lay observer

would consider the works as a whole substantially similar to

one another.” Williams, 84 F.3d at 590 (citing Walker, 784

F.2d at 50, and Burroughs v. Metro-Goldwyn-Mayer, 683

F.2d 610, 624 (2d Cir. 1982)).

Finally, the issue arises of the proper standard for appellate

review of a grant or denial of a motion for judgment as a

matter of law in a copyright infringement case. The

cornerstone of such review in copyright infringement cases,

just as in other cases, is whether, given the law and evidence

presented, a reasonable jury could have found for the nonmoving party. Nevertheless, the issue of whether substantial

similarity exists has certain features with special significance

in the application of this standard. A jury deciding the issue

of substantial similarity not only makes findings of historical

fact, but usually also serves as a proxy for the works’

intended audience. In this role as proxy, jurors decide not

only what happened, but also can be properly influenced by

whether their exposure to the alleged infringing work would

diminish their appetite for the copyrighted work. See Kohus,

16 Murray Hill Pub., Inc. v.

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328 F.3d at 856-57. As the diminished market for

copyrighted work is the harm that the copyright law seeks to

avoid, this issue is crucial and contains an element of

subjectivity not found in most other jury determinations.

Therefore, courts have recognized “that granting summary

judgment, particularly in favor of a defendant, is a practice to

be used sparingly in copyright 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 required.

Wickham, 739 F.2d at 1097; Kohus, 328 F.3d at 853. Courts

“have frequently affirmed summary judgment in favor of

copyright defendants on the issue of substantial similarity.”

Shaw, 919 F.2d at 1355. One reason to do so is that the

question of substantial similarity can usually be decided on

the basis of the works themselves and rarely, if ever, involves

questions of credibility, the peculiar province of the jury.

Also, while judges “may not be qualified literary critics,

[they] are fitted by training and experience to compare literary

works and determine whether they evidence substantial

similarity.” O’Neill v. Dell Publ’g Co., 630 F.2d 685, 690

(1st Cir. 1980).

IV

With this background on some relevant aspects of the law

of copyright infringement, we turn to the facts of this case.

The crucial issue is the degree of similarity between CTBC

and JATW. While both of these works went through

numerous revisions, Murray Hill’s core claim is that the

JATW movie infringes on its copyright to the CTBC

screenplay. A detailed summary of both is in order:

CTBC tells the story of Bess Parker, a poor white divorced

cleaning woman with a six-year-old son, Tommy. Lacking a

father figure, Tommy focuses obsessively on “Action Man,”

a super-hero action figure. Twelve days before Christmas,
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Bess goes to the local toy store to buy the toy she has

previously reserved. But when she finds herself short of cash

to pay for it and the store clerks refuse to hold it for her any

longer, Bess hides the toy in the store. The next day Bess

returns to buy the toy she stashed away, but it is snatched out

of her hands by Clare, a wealthy black woman who owns and

operates a real estate business. Bess attempts to recover the

toy by threatening Clare with an authentic-looking toy gun,

but Clare gets away. Dejected, Bess returns to the subsidized

apartment that she shares with her mother. Bess and Tommy

buy a cheap Christmas tree and decorate it.

The next day, while cleaning the home of Carol, an

employee of Clare’s, Bess meets Steve, Carol’s brother and

owner of a toy store. Later that day, Bess takes Tommy to see

a toy store Santa Claus without realizing that it is Steve in

disguise. When Bess becomes angry at the Santa Claus for

promising Tommy an Action Man figure, Steve reveals his

identity and Steve and Bess agree to go on a date. That

evening, Carol calls Bess to tell her that Clare’s company is

going to tear down Bess’s apartment building. The next day,

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

out of her purse. Bess’s next cleaning job is Clare’s house,

where she meets Eric, Clare’s husband and a doctor. Eric is

annoyed that Bess mistakes him for a servant, perhaps

because Eric too is black. At night, Eric shares this story with

Clare. The next day, Steve takes Bess to Carol’s office party

where Bess for the first time realizes that the woman who

took her action figure, the woman whose house she has been

cleaning, and the woman whose company is going to tear

down her home are all one and the same.

Back at home, Bess agrees to go sledding with Steve.

When Steve returns to Carol’s house, he tells her about his

feelings for Bess. Over the following days, Steve takes Bess

and Tommy sledding and shopping. Bess and her mother

18 Murray Hill Pub., Inc. v.

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Nos. 01-2668/2721

meet at a coffee shop, discuss their difficulties in finding an

Action Man toy and Bess’s potential romantic involvement

with Steve, whom both women believe to be a mere Santa

Claus impersonator rather than the owner of the toy store.

Meanwhile, Steve has been trying to use his position as a toy

store owner to obtain an Action Man toy for Tommy. On

Steve and Bess’s next date, Bess insists that they go

Christmas shopping at an inexpensive store, because Bess

believes that the expensive department store suggested by

Steve is unaffordable for them.

The next time Bess goes to clean Clare’s house, she

discovers a bag full of Action Man toys and, annoyed at

Clare’s greed, hides one of the figures under a pillow. When

Bess visits Carol’s house in order to see Steve, Carol

mentions that Steve is in fact a well-to-do toy store owner,

and Bess, furious with Steve for having misled her, storms

out. Having put Tommy, who is full of confidence that he is

going to receive an Action Man figure, to bed and inspired by

a drawing Tommy has made of an Action Man figure, Bess

decides to break into Clare’s home and retrieve the toy she

had stashed away. Bess, wearing camouflage face paint, is

surprised by Clare, who mistakes her for the Night Prowler,

a burglar who has been plaguing the neighborhood, but Bess

manages to escape with the Action Man figure. The

following day, Bess and her mother have a kitchen-table

conversation. Bess, in despair over her financial situation, the

imminent eviction, and the fact that she is a thief, decides to

return the Action Man figure. After Bess is gone, Tommy

shows his grandmother the cereal-box tops he has collected to

redeem for an Action Man figure and she decides to forego

playing the lottery and redeem the box tops instead.

When Bess arrives at Clare’s house, Clare and Eric are

having a discussion on the wisdom of Clare’s plans to evict

poor tenants in order to make room for her development

project. As Bess tries to return the Action Man figure to
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Clare’s stash, Clare comes upon her and for the first time

notices that her cleaning woman is the woman with whom she

struggled in the toy store. In the ensuing melee, Bess drops

the action figure and flees the scene. 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 played that day. At this moment,

police officers enter and arrest Bess for being the Night

Prowler.

Enraged, Bess’s mother heads to Clare’s home and berates

her in front of her party guests for having had Bess arrested.

After the party is over, Clare proceeds to a local church where

she, dressed in a Santa Claus suit, hands out presents to poor

children. After listening to the local priest describe the

children’s plight, she has a change of heart. She returns

home, collects all the presents under her Christmas tree, and

distributes them to the poor children at a local homeless

shelter. Meanwhile, Bess is released on bail, raised by her

kindly neighbor, and Eric apprehends the real Night Prowler.

Clare, having discovered her error in identifying Bess as the

Night Prowler, heads to Bess’s apartment where she tears up

the eviction notice. She also offers Bess an Action Man

figure, but Bess, realizing that her son needs his mother, not

a toy, declines the gift. The following morning, Tommy is

understanding about not receiving an Action Man figure and

Bess reconciles with Steve. Tommy discovers another

present, an Action Man figure after all, and for the lack of a

better explanation, concludes that the real Santa must have

brought it. As credits roll, a trio of Santas are seen walking

towards the homeless shelter. In the final image of the

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 JATW movie is Howard Langston,

the workaholic CEO of a mattress company. Howard has

promised his eight-year-old son Jamie that he would attend

20 Murray Hill Pub., Inc. v.

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Nos. 01-2668/2721

the ceremony at which Jamie is to be awarded his purple belt

in karate. Having been detained at the office by business

calls, Howard speeds to the ceremony, but is caught by police

officer Hummel and as a consequence misses the award

ceremony. Howard’s wife Liz instead attends the ceremony

with their divorced neighbor, the oleaginous Ted, whose son

also receives a belt at the ceremony. The next morning, in

order to return himself into the good graces of the deeply

disappointed Jamie, Howard promises to buy him a Turbo

Man action figure for Christmas. After this prologue, the

action skips forward to the morning of Christmas Eve at the

Langston’s well-appointed home. Liz asks Howard whether

he bought the Turbo Man figure. Howard, who had forgotten,

nevertheless claims he did. Howard leaves, according to him

in order to pick up the toy from his office, but not before

promising Jamie that he will attend a Christmas parade at

which Turbo Man is scheduled to appear.

Howard begins his frantic search for the Turbo Man action

figure at a local toy store. Here he meets Myron Larabee, a

stressed-out black mailman, who also is trying to make a lastminute purchase of a Turbo Man figure for his son. When

Howard and Myron ask store clerks for a Turbo Man figure,

they are laughed at for expecting to be able to find this

extremely popular toy at such a late date. After driving from

store to store without success, Howard overhears that a store

at a local mall just received a late shipment of Turbo Man

figures. In his haste to get to the mall, Howard runs over

Hummel’s motorcycle. Hummel is not amused. At the mall,

when the toy store clerks try to distribute numbered balls to

establish priority for the limited quantity of Turbo Man

figures, a riot breaks out. After Howard and Myron struggle

across the mall for one of the balls, Howard overcomes

Myron 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 are
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still available. At the warehouse, filled with Santa Clauses

and elves, Howard pays $300 for a Turbo Man figure, only to

have it revealed as a poorly made foreign knock-off, which

promptly falls apart in his hands. Before Howard can

complain, the police raid the warehouse and arrest the Santas

and elves. Howard barely escapes by using a toy police

identification badge. Howard’s SUV, parked outside the

warehouse, has been stripped clean by thieves.

Howard and Myron run into each other again in a coffee

shop and commiserate. Myron explains to Howard how all

his life’s misfortunes are traceable to not receiving a

particular popular toy when he was a child. A radio playing

in the coffee shop announces a call-in contest offering a

Turbo Man figure to the first person to name all of Santa’s

reindeer. Myron and Howard fight over the local payphone

but only manage to break it. Instead, they start running to the

nearby radio station. Howard, being in much better physical

condition than the portly Myron, arrives first at the station

and breaks into the broadcast booth of the program’s host.

Shortly afterwards, Myron too breaks into the booth and

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, Howard leaves, but Myron

drops the “bomb” which turns out to be only a regular

Christmas package. On the way out of the station, Myron is

apprehended by a police SWAT team, led by Hummel, but

manages to escape by using another mail bomb. This bomb

does explode, leaving Hummel comically singed.

Howard returns home defeated, but sees Ted and Liz

decorating his Christmas tree. Jealous and enraged, Howard

breaks into Ted’s house to steal the Turbo Man figure that

Ted had bragged about buying for his son. Inside Ted’s

house, Howard is attacked by Ted’s pet reindeer, accidentally

sets fire to several rooms, and is ultimately discovered by Ted

and Liz while holding the stolen Turbo Man figure. Liz,

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Nos. 01-2668/2721

disgusted with Howard’s behavior, leaves for the parade with

Jamie, Ted, and Ted’s son. After dropping off the children,

Ted attempts to kiss Liz, who violently rebuffs his advances.

Meanwhile, Howard shares some beers with the reindeer and

also heads for the parade. There Howard, mistaken for the

actor hired to play Turbo Man, is put into a high-tech Turbo

Man costume, put on a float, and given a special Turbo Man

action figure to present to the attending child of his choice.

At the parade, Howard/Turbo Man spots Jamie, who does

not recognize him, in the crowd and gives him the Turbo Man

figure. At this point, Myron, who has stolen the costume of

Dementor, Turbo Man’s nemesis, attacks Howard and Jamie

with intent to steal the figure. In a special-effects-heavy fight

between Howard/Turbo Man and Myron/Dementor, echoing

an episode of the Turbo Man television program glimpsed at

the beginning of the movie, Howard defeats Myron. After 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 figure to Myron.

Howard, Liz, and Jamie embrace and credits roll. In a postcredit scene, Liz wonders what Howard bought her for

Christmas and the horrified Howard realizes that he forgot to

buy her a present.

V

Most of the issues that form the basis of a copyright

infringement claim are no longer in dispute in this case. The

CTBC screenplay was copyrighted. Fox did have access to

the CTBC screenplay before it registered the JATW

screenplay and before production of the JATW movie, but not

before it received the JATW “treatment.” Finally, the jury

found that the JATW movie and the CTBC screenplay were

substantially similar, establishing Murray Hill’s copyright

infringement claim. Fox appeals on the basis of the denial of

its pre- and post-verdict motions for judgment as a matter of
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23

law on the issue of substantial similarity. “Judgment as a

matter of law is appropriate only when there is a complete

absence of fact to support the verdict, so that no reasonable

juror could have found for the nonmoving party.” 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

law is the six-page “treatment” that Kornfield registered prior

to the time that Murray Hill could establish, directly or

inferentially by means of striking similarity, that Fox had

access to the CTBC screenplay. At trial, Murray Hill pressed

several theories about how Fox could have gained access to

the CTBC screenplay earlier, but the district court found that

these theories were too speculative to establish access and

Murray Hill does not appeal this finding. As we noted above,

striking similarity, precluding all possible conclusion but that

the work was copied, can substitute for proof of access.

However, even a superficial glance at the CTBC screenplay

and the JATW treatment reveals that whatever the

similarities, they most certainly do not approach the level

precluding all possibilities but copying. Therefore, the

district court rightly found that the treatment was an

independent creation.

Murray Hill’s claim of substantial similarity between the

JATW movie and the CTBC screenplay rested on an expertprepared list of twenty-four similarities between the two.

However, of these twenty-four similarities, all but six already

existed in the independently created treatment. Thus, only

those six elements could possibly have been taken by Fox

from the CTBC screenplay. These six remaining similarities

were the children’s drawings (of Action Man in CTBC and of

the Langston family in JATW), the unhelpful toy store clerks

(refusing to give the toy to Bess in CTBC and laughing at

Howard’s late request for the toy in JATW), the intrusive

24 Murray Hill Pub., Inc. v.

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Nos. 01-2668/2721

neighbor (a minor sympathetic character in CTBC and Ted in

JATW), and three similarities in the theft of the toy (from

Clare by Bess in CTBC and from Ted by Howard in JATW).

Each of these similarities is tenuous. At the level of actual

expression they differ significantly, and at any level of

abstraction that covers both JATW and CTBC, they are

ubiquitous in literature and the cinema. We are instructed to

look at such slight similarities holistically to determine

whether collectively they could prove substantial similarity.

Where, as here, the slight similarities are not thematically

related, the whole is no greater than the sum of the parts.

Therefore, if the court was required to filter out all the other

similarities, summary judgment for Fox would have been

appropriate.

Contrary to the parties’ equally fervent, though otherwise

diametrically opposed, assertions, the question of whether

elements already found in a copyright defendant’s earlier,

non-infringing work are properly discounted in performing

substantial similarity analysis is, at least in this court, one of

first impression. The canonical statement of law is that nonprotectible elements must be filtered out. Kohus, 328 F.3d at

855. But here the argument is not that the eighteen

similarities allegedly shared by the CTBC screenplay, the

JATW movie, and the JATW treatment were non-protectible,

but rather that these elements were independently created.

We turn to persuasive precedent and reason to determine

whether independently created elements must be discounted.

Precedents in our sister circuits suggest that under

appropriate 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 Microsoft’s graphical user interface infringed on the

copyright of Apple’s equivalent software. Significantly,

Microsoft had obtained a license from Apple for some, but

not all, elements of Apple’s software. The court stated that
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“[w]here, as here, the accused works include both licensed

and unlicensed features, infringement will depend on whether

the unlicensed features are entitled to protection.” Id. at 1441.

“Because only those elements of a work that are protectible

and used without the author’s permission can be compared

when it comes to the ultimate question of illicit copying, we

use analytic dissection to determine the scope of copyright

protection before works are considered ‘as a whole.’” Id. at

1443 (citations omitted). In so concluding, the Apple court

extended the application of filtering, from unprotectible

elements to protectible elements used with the permission of

the copyright owner.

In Sturdza, an architect brought a claim against the United

Arab Emirates alleging that the design of the defendant’s new

embassy infringed on the copyright of architectural drawings

she had previously submitted to the defendant. 281 F.3d at

1291-92. The defendant contended that the design was in fact

based on the work submitted by another architect. Ibid. The

district court in performing the substantial-similarity analysis

discounted elements of the embassy design that were already

present in work submitted by the other architect before the

defendant had access to the plaintiff’s drawings. Id. at 1297.

Because the plaintiff did not appeal this discounting, the

District of Columbia Circuit also excluded the elements that

were already present in the earlier work. Ibid.

Logic also supports the filtering of independently-created

elements. The purpose of the substantial-similarity analysis

is to answer the question whether the defendant copied the

work of the plaintiff. Ordinarily, similar elements between

known work of the plaintiff and the defendant’s work will,

depending on the degree of uniqueness and originality of the

element, support such an inference. However, where

defendant owns a prior work containing the same elements,

he has no reason, beyond the illicit thrill of copyright

infringement, to copy wrongfully from another what he could

26 Murray Hill Pub., Inc. v.

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legally copy from himself. Therefore, where an element

occurs both in the defendant’s prior work and the plaintiff’s

prior work, no inference of copying can be drawn. See

Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d

Cir. 1936) (“If the defendant has had access to other material

which would have served him as well, his disclaimer [of

copying] becomes more plausible.”); Ellis, 177 F.3d at 507

(“[A]n inference of copying is rebuttable by evidence of

independent creation of the allegedly infringing work.”)

(citations omitted). Such elements should be removed from

consideration.

Therefore, we hold that elements of a copyright defendant’s

work that were created prior to access to a plaintiff’s work are

to be filtered out at the first stage of substantial-similarity

analysis, just as non-protectible elements are. In the present

case, no reasonable jury could have found substantial

similarity solely on the basis of the six minor elements 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 matter of law in favor of Fox.