Evidence That Film Was Adapted From Novel Not Enough to Establish Substantial Similarity

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By Anandashankar Mazumdar  


Evidence that a 2012 movie might have been adapted from a 1998 novel was not sufficient to establish copying or substantial similarity for the purposes of a copyright infringement claim, the U.S. District Court for the Northern District of California ruled April 2 (Quirk v. Sony Pictures Entertainment Inc., N.D. Cal., No. 3:11-cv-03773-RS, 4/2/13).

Granting summary judgment of noninfringement on the copyright claim, the court also rejected the plaintiff's Desny-type breach of implied contract claim under California state law on the basis that he had voluntarily disclosed his ideas to the public by publishing the novel.

Novelist Pushes for Film Development Deal

In 1998, Joe Quirk, a native of Westfield, N.J., published his first novel, Ultimate Rush, featuring a story centering on a delivery service messenger in San Francisco. Before the book went to press, Quirk, through his agent, distributed copies and summaries of the novel to movie producers, in an attempt to secure a movie development deal.

Warner Bros. Entertainment Inc. offered Quirk an option on a screenplay based on the novel. Warner Bros. did not choose to produce a film, and the option eventually lapsed, although Warner Bros. retained copyright interest in the two scripts produced during that time.

In 2010, Quirk learned about the then-in-progress production of the film Premium Rush, a story centering on a bicycle messenger starring Joseph Gordon-Levitt. The script was written by David Koepps and John Kamps, who had had extensive experience in adapting works for the screen.

Quirk sued Sony Pictures Entertainment Inc., as well as other entities and individuals involved with the production of Premium Rush, which was eventually released in 2012. He alleged copyright infringement as well as a Desny-type claim for breach of an implied contract to pay for use of a work.

A Desny-type claim allows for recovery under California state contract law even when a plaintiff cannot show that a defendant has copied without authorization expression that is protected under copyright law. Desny v. Wilder, 46 Cal. 2d 715, 299 P.2d 257, 110 U.S.P.Q. 433 (1956). Sony moved for summary judgment on the infringement claim and the Desny claim.

Whether Film Was 'Adaptation' Not Relevant

Judge Richard Seeborg first rejected Quirk's argument that proving that the screenplay of the 2012 movie was an “adaptation” of his book was sufficient to establish either infringement or a Desny claim.

Quirk relied on the affidavit of an expert, Bruce Gelfand, who had concluded that Premium Rush reflected the characteristics of having been adapted from Ultimate Rush, based on a definition of adaptation as “a process of dramatic refinement of an underlying original work, to create an effective new work utilizing the strengths of the original work.”

However, according to the court, such a standard was inconsistent with copyright law, which restricts only copying of specific protectable expression, not copying of ideas or even “strengths.” The relevant legal question, the court said, was whether Quirk's expression had been copied, and, thus, whether the movie screenplay was substantially similar to Quirk's work.

In focusing on the process of adaptation, the court said:  

… Gelfand has offered an analysis that addresses the wrong factual question. If Gelfand's comparisons between the works are fair, and the conclusions he draws logically sound, then perhaps a reasonable inference could be drawn that the script of Premium Rush was developed through an “adaptation” process that began with Quirk's novel (and/or one or both of the Warner scripts) as a starting point. The process by which Premium Rush was written is, though, tangentially relevant, at best. It would, for instance, bear on willfulness. The threshold question, however, and one which Gelfand's mode of analysis is ill-designed to address, is whether the end product of the Premium Rush movie is “substantially similar” to Quirk's novel, as that term is used in copyright law.  



Instead of focusing on whether the movie was substantially similar to the novel, the court said, the affidavit instead focused on whether Sony had “used Quirk's novel and/or the Warner screenplays as inspiration and as a shortcut around what would have been required by truly independent creation.”

The court also rejected as irrelevant any analysis based on comparing the two Warner Bros. scripts to the movie or to the early drafts of the Premium Rush screenplay. Quirk held no copyright interest in the Warner Bros. scripts, the court pointed out. And the claims were against the final production, not against the preliminary drafts.

Works Not Substantially Similar

The court distinguished Sega Enterprises Ltd. v. Accolade Inc., 977 F.2d 1510, 24 U.S.P.Q.2d 1561 (9th Cir. 1992), which focused on intermediate copying of software. Indeed, the court pointed out that Sega itself distinguished its own facts from those “involving alleged copying of books scripts, or literary characters, where 'the eventual lawsuit alleged infringement only as to the final work of the defendants.' ”

Also distinguished was Walker v. Time Life Films Inc., 784 F.2d 44, 228 U.S.P.Q. 505 (2d Cir. 1986), in which preliminary drafts were found relevant only for the purpose of proving access.

Thus, the infringement claim turned on the question of substantial similarity. On this question, the court concluded that:  

The two works differ greatly in many large and small details as well as in their overall mood, style, and structure. In his supplemental comparison that focuses solely on the book and the final movie product, Quirk has nonetheless managed to set out some 35 pages of alleged substantial similarities. Review of that listing, however, reveals that Quirk is relying on subjective and often highly unfair characterizations of material in the book and the movie to create highly strained purported “similarities.”  

… Selective and/or distorted characterizations of any two things can, of course, produce points of similarities. A blue whale is much like a hamster with respect to all the mammalian features they share. Yet a hamster is more like a sparrow than a whale, if one focuses on size, or the likelihood of finding one in the ocean, rather than whether the creatures under comparison are both mammals. The fact that a hamster bears some important features in common with whales, others with sparrows, and yet others with both, does not necessarily make a hamster “substantially similar” to either a whale or a sparrow.  



The court concluded that as a matter of law, the novel and the film were not substantially similar and thus granted summary judgment of noninfringement in Sony's favor.

Contract Claim Defeated by Voluntary Publication

Turning to the Desny claim, the court first noted that the existence of such claims had recently been affirmed by Montz v. Pilgrim Films and Television Inc., 649 F.3d 975, 98 U.S.P.Q.2d 1569 (9th Cir. 2011) (en banc)(89 PTD, 5/9/11), which found that such implied contract claims were not pre-empted by the Copyright Act.

However, in this case, Quirk had failed to establish any evidentiary basis for his claim that Sony had obtained copies of the Warner Bros. scripts under circumstances that would give rise to a “bilateral expectation of payment,” as required for a Desny-type claim.

Furthermore, the court said, the fact that Quirk had voluntarily distributed his novel and summary all over Hollywood in the late 1990s undermined his Desny claim, which presumes that a writer is disclosing material to a specific party with expectation of payment should a movie be produced. The court said:  

Here, Quirk's publication of Ultimate Rush in the late 1990's was an “unconditioned disclosure” to the public at large of all of the ideas contained in the novel. From the outset of this litigation, Quirk has admitted that if defendants [had] worked from a copy of his novel they purchased on the open market, he would have no viable Desny claim. There is no reason in law or logic that the result should be different even assuming defendants [had] worked from a copy of the novel (and/or from the Warner scripts) obtained through [Quirk's agents].  



According to the court, Montz suggested that in order for an implied contract to be created under Desny, the disclosure of ideas must have been confidential and that there must have been a suggestion that the receiver of the material had promised to keep that confidentiality intact.

“It may be that a plaintiff can pursue a Desny claim even where the subject ideas have not been treated with the utmost degree of secrecy and confidentiality, but Montz shows that the touchstone remains whether the plaintiff can be said to be disclosing something that is not otherwise freely available to the defendant,” the court said.

The court concluded that Quirk could not establish an implied contract to pay based on disclosure of ideas that had voluntarily been disclosed to the public a decade or more before. Thus, the court also granted summary judgment on the Desny claim in Sony's favor.

Quirk was represented by Rachel S. Bravo of Valle Makoff, San Francisco. Sony Pictures was represented by Christopher G. Caldwell of Caldwell Leslie & Proctor, Los Angeles.

By Anandashankar Mazumdar  

Text is available at http://pub.bna.com/ptcj/Quirk13Apr2.pdf.

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