In dismissing a copyright suit over a motion picture, the Ninth Circuit once proclaimed that "in Hollywood, as in [life] generally, there is rarely anything new under the sun."1 Television viewers surely would agree. Once inundated with westerns, detective shows, and police dramas, they now are deluged with reality TV programming in the form of game shows, dating shows, judge shows, hidden camera shows, and makeover shows. Producers combine and recombine familiar formulas within the popular genres of the day. So much familiarity in television programming inevitably breeds litigation.
For instance, the producers of the British show Wife Swap recently sued the American producers of Trading Spouses for copyright infringement in Los Angeles federal court, and last fall a Venice-based entertainment company sued Donald Trump and the producers of The Apprentice for copyright infringement and included idea submission claims under state law.2 When a plaintiff claims that the hit show of the moment has "ripped off" a script the plaintiff wrote or an idea the plaintiff had first, how is a court to decide whether the defendant is a scheming plagiarist or an innocent creator working within the expectations and limitations of the same popular genre?
Copyright law answers that question primarily by testing whether the works in question are "substantially similar." However, following the Ninth Circuit's 2002 decision in Metcalf v. Bochco,3 it has become considerably more difficult to apply that test consistently and predictably. In an uncharacteristically cryptic opinion by Judge Alex Kozinski, the court held that even though all the alleged similarities between the plaintiffs' screenplay and the defendants' television series were generic and thus not protected by copyright law, the parties' respective arrangements of those generic elements were sufficiently alike to require a trial on the issue of substantial similarity. Ensuing Ninth Circuit decisions--most notably, the court's 2003 ruling in Rice v. Fox Broadcasting Company4--have grappled with questions left open by Metcalf but have yet to completely unmuddle what Metcalf described as the "turbid waters" of the substantial similarity test.
In Metcalf, a husband-and-wife writing team sued television producer Steven Bochco, the creator of Hill Street Blues and NYPD Blue. The plaintiffs asserted that Bochco's urban hospital drama City of Angels infringed on the urban hospital drama envisioned in screenplays they had previously submitted to Bochco.
Jerome and Laurie Metcalf claimed that in 1989 they conceived a story about a county hospital in inner-city Los Angeles and the struggles of its mostly African American staff. They wrote a summary, or "treatment," and gave it to actor Michael Warren, a friend who also knew Bochco. Warren allegedly told the Metcalfs he liked the treatment and would relay it to Bochco, then later told them that Bochco also liked it but was too busy to use it. In 1991, the Metcalfs wrote a screenplay based on their treatment. That screenplay also was submitted to Bochco. Warren again told the Metcalfs that Bochco liked the script but lacked the time to develop the project. In 1992, the Metcalfs revised a second screenplay and submitted it to Bochco, Warren, and CBS. Eight years later, CBS began airing City of Angels, a weekly drama about a county hospital in inner-city Los Angeles with a predominately African American staff. The first episode was produced and written by Bochco and starred Warren.
The Metcalfs sued Bochco, Warren, CBS, and other individuals and production companies for claims including copyright infringement. The Metcalfs did not allege that the defendants copied specific scenes or dialogue from their treatment and screenplay. Instead, they pointed to a host of alleged similarities in setting, theme, character types, and plot structure in the respective works. On summary judgment, the defendants argued that the works were not substantially similar because the purported similarities between the Metcalfs' material and City of Angels--such as a love triangle among young professionals, or an idealistic doctor choosing between financial and emotional rewards--were stock literary devices not protected by copyright law.5
Explicating the Extrinsic Test
The evolution of the case is familiar to copyright practitioners. Infringement suits over the genesis of television shows or motion pictures rarely involve allegations that the defendant producer, network, or studio lifted an entire script or slavishly copied entire scenes from the plaintiff's pilot or screenplay. Usually, the gravamen of the plaintiff's claim is that the defendant took the conceptual heart of the plaintiff's work rather than his or her precise words.
To establish copyright infringement, a plaintiff must prove ownership of a valid copyright and copying by the defendant of protectable elements of the work.6 Because there rarely is direct evidence of copying, plaintiffs generally attempt to satisfy the second element circumstantially by proving that the defendant had access to the copyrighted work and that there is "substantial similarity" of protected expression between the plaintiff's and the defendant's works.7
The critical term is "protected expression": The Copyright Act protects the expression of ideas but not ideas themselves.8 As a corollary to this idea/expression dichotomy, expressions that are inherent in the treatment of a given idea are likewise not protected--otherwise the copyright owner effectively would secure a monopoly over the idea itself. Two defenses to infringement claims embody this principle. Under the merger doctrine, if an idea is capable of being expressed in only one way, the expression "merges" with the idea itself and is not subject to copyright protection.9 Similarly, under the scenes à faire doctrine, expressions that are naturally associated with the treatment of a given idea--that are "common to a particular subject matter or medium"--are treated like ideas and do not receive copyright protection.10 As with the merger doctrine, the rationale for the scenes à faire doctrine is that standard, obvious, and generic expressions of a basic idea cannot be protected without giving the copyright owner exclusive control over the underlying idea.11
Invoking these doctrines, defendants typically will catalog a multitude of prior works that have similar themes, plots, settings, or characters in an effort to show that the only similarities between the works in question consist of abstract ideas or staple literary devices that naturally follow from the treatment of a particular idea. Plaintiffs, on the other hand, will compile lengthy lists of purported similarities in an effort to show that the two works have much more in common than a bare, abstract idea. The protean nature of this exercise has led the Ninth Circuit to caution that such lists of purported similarities "are inherently subjective and unreliable."12 Nevertheless, these lists are unavoidable, since the Ninth Circuit has held that the court must first identify the similar elements in the works in question before the works can be considered and compared as a whole.13
Metcalf is illustrative of this process. The plaintiffs' tally of proffered similarities, which the Ninth Circuit described as "striking," included the following:
• Both works "are set in overburdened county hospitals in inner-city Los Angeles with mostly black staffs."
• Both works "deal with issues of poverty, race relations and urban blight."
• Both works' main characters are "young, good-looking, muscular black surgeons who grew up in the neighborhood where the hospital is located."
• Both surgeons "struggle to choose between the financial benefits of private practice and emotional rewards of working in the inner city."
• Both surgeons "are romantically involved with young professional women when they arrive at the hospital, but develop strong attractions to hospital administrators."
• Both administrators "are in their thirties, were once married but are now single, without children, and devoted to their careers and to the hospital."
• In both works, "the hospital's bid for reaccreditation is vehemently opposed by a Hispanic politician."14
To implement copyright law's distinction between ideas and expressions, as well as the merger and scenes à faire doctrines, the Ninth Circuit employs a two-part test--divided into "extrinsic" and "intrinsic" components--to determine whether there is substantial similarity of protected expression between the works at issue. The extrinsic test is an objective analysis of concrete expressive elements: It focuses on "articulable similarities" between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in the respective works.15 The intrinsic test is a subjective analysis that focuses on whether the "ordinary, reasonable audience" would recognize the defendant's work as a "dramatization" or "picturization" of the plaintiff's work.16
In comparing allegedly similar elements under the extrinsic test, courts are supposed to filter out any parts of the copyrighted work that are not protected. This process of "analytic dissection" requires the court to distinguish between protectable and unprotectable material. As the Ninth Circuit held in Apple Computer v. Microsoft Corporation, a party claiming copyright infringement "may place no reliance upon" any similarity in expression resulting from unprotectable elements.17
In Metcalf, the court held that the similarities proffered by the plaintiffs were "not protectable when considered individually; they are either too generic or constitute 'scenes a faire.'"18 In a departure from prior holdings, however--and without engaging in an analysis of the dialogue, mood, setting, pace, and other traditional extrinsic test factors--the court held that the plaintiffs satisfied the extrinsic test because the generic similarities were numerous and arose in common "patterns" or "arrangements" in the two works.19 Noting only that "the presence of so many generic similarities and the common patterns in which they arise do help the Metcalfs satisfy the extrinsic test," the court tersely concluded that the "cumulative weight" of those generic similarities enabled the Metcalfs to survive summary judgment.20
Common Patterns Plus Access
Although this "sequence and arrangement" principle has long been acknowledged by the Ninth Circuit, it has seldom been applied. Before Metcalf, the Ninth Circuit had not held that an arrangement consisting entirely of generic, unprotectable elements was sufficient to satisfy the extrinsic test. To the contrary, the decisions leading up to Metcalf stressed the importance of analytic dissection in filtering out unprotectable similarities. In a case decided just a month before Metcalf, for example, the court held that when applying the extrinsic test, it "must filter out and disregard the nonprotectible elements" in making its substantial similarity determination.21
Those cases that have acknowledged the principle that infringement could be based on an original arrangement of unprotected elements also have emphasized that such arrangements enjoy only a very narrow copyright protection against wholesale plagiarism. The Ninth Circuit has described this narrow scope of protection as a "thin copyright" that protects only against "virtually identical" copying.22 In finding a triable issue of fact as to substantial similarity in the arrangement of otherwise generic story elements, Metcalf does not even mention the concept of thin copyright protection.
Instead, the Metcalf court explained that the "particular sequence" in which an author "strings together a significant number of unprotectable elements" can itself be a protectable element: "Each note in a scale, for example, is not protectable, but a pattern of notes in a tune may earn copyright protection."23 Described in such an extreme form, however, the "sequence and arrangement" principle is not very enlightening. The individual letters of the alphabet likewise are not copyrightable, but a poem composed by arranging those letters into words may be. The real question is at what point does the sequence or pattern of unprotectable elements become sufficiently expressive that it may support a claim for copyright infringement and enable a claimant to satisfy the extrinsic test?
Metcalf provides scant guidance on this question. Trial courts and practitioners are left to wonder whether Metcalf merely stands for the proposition that sometimes a plaintiff's arrangement of stock literary devices will raise a genuine issue of fact on the question of substantial similarity and sometimes it will not. On the other hand, observers may question whether Metcalf signals a fundamental shift in the circuit's approach to the extrinsic test. The end of the Metcalf opinion suggests that a narrower reading may have been intended by the court.
In the next to last paragraph, Kozinski observes that the Metcalfs' case "is strengthened considerably by Bochco's concession of access to their works" and by the connection that Warren and Bochco had to the Metcalfs and City of Angels.24 The court's emphasis on the unusually high degree of access shown by the Metcalfs suggests that the Ninth Circuit may be more accepting of a plaintiff's argument that there is substantial similarity in the arrangement of generic elements when the defendant has had extensive, first-hand experience of the plaintiff's arrangement of those elements.
Such a reading of Metcalf would be consistent with the Ninth Circuit's "inverse ratio" rule, though the opinion did not mention it specifically. Under that rule, the court requires a lower standard of proof on substantial similarity when a high degree of access is shown.25 Conversely, a plaintiff may be excused from proving access if it can establish a very high degree of similarity that is termed "striking similarity."26
Ultimately, however, it is not clear what factors the Ninth Circuit considered decisive in finding that the Metcalfs had raised a triable issue of fact under the extrinsic test. In discussing the number and arrangement of stock elements, the court noted merely that "the presence of so many generic similarities and the common patterns in which they arise do help the Metcalfs satisfy the extrinsic test."27 Similarly, in noting the plaintiffs' heightened showing of access the court simply stated that their case was "strengthened considerably" by that evidence.28 Obvious questions remain open.
Subsequent Ninth Circuit decisions indicate that Metcalf does not herald a fundamental change in the court's application of the extrinsic test. These include two cases involving the originality of sculptural works, a case featuring competing photographs of a vodka bottle, and an important decision involving two nondramatic television programs in which a masked magician revealed the secrets behind famous illusions.
In the first of these decisions, Ets-Hokin v. Skyy Spirits, Inc.,29 the Ninth Circuit held that two advertising photographs of Skyy's "iconic" blue vodka bottle were not substantially similar because the alleged similarities were inherent in the idea of photographing a blue vodka bottle.30 Citing Apple Computer but not Metcalf, the court explained that when features of a work "are as a practical matter indispensable, or at least standard, in the treatment of a given idea," they are treated like ideas and are therefore not protected by copyright.31 Finding the "range of protectable expression" to be constrained by the "subject-matter idea" of the photograph and the "conventions of the commercial product shot," the court held that once the unprotectable elements were subtracted from the analysis, the plaintiff enjoyed only a thin copyright against virtually identical copying.32
In Satava v. Lowry33 and Lamps Plus, Inc. v. Seattle Lighting Fixture Company,34 both decided in 2003, the Ninth Circuit considered the separate but related question of when a work is sufficiently "original" to qualify for copyright protection. To meet the threshold requirement of originality, a claimant need only show that he or she is the author of a work that displays some minimal degree of creativity. This test is easily satisfied in the context of literary works, and usually can be met by showing that the author indeed wrote the book, story, poem, or screenplay in question.35 Hard questions about originality arise more often in the context of functional, nonliterary works such as product designs and factual directories.36
In Satava, the court considered a dispute between two glass sculptors. Richard Satava, a California artist, began selling colorful, lifelike glass-in-glass sculptures of jellyfish in 1990. A few years later, artist Christopher Lowry began making lifelike glass-in-glass jellyfish sculptures to sell in Hawaii. Satava sued Lowry for copyright infringement and got a preliminary injunction that prohibited Lowry from making or selling glass-in-glass jellyfish sculptures. The Ninth Circuit reversed, holding that the allegedly similar aspects of the two artists' sculptures were unprotectable elements that "naturally follow from the idea" of a glass-in-glass sculpture of a jellyfish, and that Satava's selection and arrangement of those unprotectable elements were not sufficiently original to merit copyright protection.37
The court explained that copyright law did not protect the idea of a glass-in-glass jellyfish sculpture or any aspects of such a sculpture dictated by the physiology of jellyfishes or the constraints of the glass-in-glass medium.38 Judge Ronald M. Gould--who had been a member of the Metcalf panel--proceeded to address the plaintiff's "sequence and arrangement" argument and to distinguish Metcalf forcefully. He noted that although it is true that "a combination of unprotectable elements" may qualify for copyright protection, "it is not true that any combination of unprotectable elements automatically qualifies for copyright protection."39 Instead, such a combination is eligible for copyright protection "only if those elements are numerous enough and their selection and arrangement original enough" that their combination constitutes an original work of authorship.40
Satava connected this application of the "sequence and arrangement" doctrine to the underlying policies of copyright law--an analysis not undertaken in Metcalf--and stated that copyright protection is not available for such a "basic combination of elements" because it would result in an effective monopoly over an idea, which is contrary to the purpose of copyright law.41 Citing Ets-Hokin, Gould reasoned that Satava possessed merely a "thin copyright that protects against only virtually identical copying."42
Though it arose in a much different context, Satava suggests that Metcalf should be read narrowly in light of these limiting principles and policy considerations. The court's subsequent decision in Lamps Plus teaches a similar lesson.
In Lamps Plus, the Ninth Circuit held invalid the plaintiff's copyright in a Victorian-style Tiffany table lamp. The court found that Lamps Plus's lamp was a compilation of preexisting components--including a shade made from ceiling lamp parts and a base purchased from China--that was not sufficiently original to qualify for copyright protection. Judge Arthur L. Alarcon's opinion relied on Satava, which it described as holding that "the combination of six unprotectable elements did not rise to the level of sufficient originality to merit copyright protection." Extrapolating from this reading of Satava, the court concluded that Lamps Plus's "mechanical combination" of four preexisting ceiling lamp elements with a preexisting table-lamp base lacked the "quantum of originality" needed for copyright protection.43
The court's focus on the raw number of unprotectable elements comprising the combination under scrutiny is unfortunate, for it suggests that a claimant might obtain copyright protection simply by combining a sufficient number of generic, utilitarian, or otherwise unprotectable elements. In addition to tallying the preexisting elements, however, the court also concluded that Lamps Plus did not create any design features that were "conceptually separate" from the utilitarian aspects of the lamp's component parts.44
While Ets-Hokin, Satava, and Lamps Plus serve as useful markers of the limits of the "sequence and arrangement" principle endorsed by Metcalf, a more comprehensive response to Metcalf is found in a fourth 2003 infringement decision, Rice v. Fox Broadcasting Company.
Rice involved two television shows that revealed the secrets of professional magicians. Plaintiff Robert Rice owned the copyright to a 1986 home video entitled The Mystery Magician, in which a masked magician revealed how to perform well-known magic tricks. About 17,000 copies of this video were sold worldwide. In 1996, Fox Broadcasting began developing a series of television specials in which a masked magician revealed the secrets behind famous magic tricks and illusions. Fox aired four of the specials in 1997 and 1998.45
Rice sued Fox for copyright infringement and false advertising. Fox successfully moved for summary judgment on the copyright claim. In an opinion by Judge Diarmuid F. O'Scannlain, the Ninth Circuit affirmed, holding that Rice failed to satisfy the substantial similarity extrinsic test because his list of purported similarities between the two shows consisted entirely of "generic" and "inconsequential" elements.46 Finding that there "are only a discrete number of ways to express a magician revealing the secrets behind magic tricks and illusions while disguising his identity," the court held that the expressive elements common to the two works were left unprotected by operation of the merger and scenes à faire doctrines.47 These similarities included an unidentified masked magician in a traditional magician's tuxedo and cape as the host, a "secret" location for filming without an audience, magic tricks that first were performed and then revealed and explained, a message that the purpose of the shows was to "inspire children," and an "overall mood of secrecy and mystery."
Rice sought to rely on Metcalf for the proposition that the "cumulative weight of similarities" may allow a plaintiff to survive summary judgment under the extrinsic test.48 The Rice court, however, distinguished Metcalf in two ways. First, it construed Metcalf as presenting an unusual "totality of similarities" and found that Rice's claim did not involve "the same pattern of generic similarities as in Metcalf."49 This approach may signal that the Ninth Circuit will read Metcalf narrowly in the future as limited at least to cases presenting patterns of generic similarities that are uniquely alike. Such an approach, however, offers little concrete guidance to trial courts, and even less comfort to infringement defendants, as plaintiffs invariably will claim that the pattern or totality of otherwise unprotectable elements is "unique enough" to survive summary judgment in any particular case.
Second, the Ninth Circuit distinguished Metcalf by reading it as "based on a form of inverse ratio rule analysis."50 O'Scannlain noted that although the court's opinion in Metcalf did not expressly invoke that rule, Metcalf found the defendants' concession of access in that case to be an "important factor in its substantial similarity analysis."51 It should be noted, however, that Metcalf involved an unusually high degree of access--including repeated, direct submissions of the plaintiffs' materials to the producer of the allegedly infringing work, who read and responded to those submissions. This showing goes well beyond a simple concession that the defendant had access, since "access" typically is defined merely as "an opportunity to view or copy" the plaintiff's work.52 Indeed, although prior Ninth Circuit decisions have applied the extrinsic test on summary judgment in cases in which the defendant admitted access, those decisions did not attach any special significance to the defendant's concession,53 and Metcalf does not purport to overrule those decisions.
Ultimately, Metcalf and Rice are not easy to reconcile. Whether these decisions represent a tension or a dialogue, they leave a number of questions unanswered. In the current reality TV era, the value of an unscripted program may lie almost entirely in its basic concept rather than in the "plot, themes, dialogue, mood, setting, pace, [or] characters" of a traditional scripted drama or comedy. Does Metcalf indicate that a plaintiff may successfully invoke copyright law to protect a particular arrangement or combination of generic elements common to all game shows, or dating shows, or hidden camera shows? Or does Rice mean that the Ninth Circuit will apply the extrinsic test more searchingly to filter out stock devices common to a particular genre, so that creators of reality programs are left with only thin copyright protection against virtually identical copying?
Since it was decided in June 2002, Metcalf has not been followed by a single published Ninth Circuit decision upholding a copyright infringement claim--or, as in Metcalf, a holding that an infringement plaintiff could survive summary judgment--based on an allegedly protectable arrangement or pattern of generic elements that were individually unprotectable. It has been distinguished by separate panels, however, in Satava and Rice. If Metcalf continues to gain little traction, two factors may explain why. The first is the Metcalf opinion's cut-to-the-chase exposition: by providing so little guidance on how to locate the line between protectable and unprotectable combinations of generic expressive elements, the opinion may be serving as little more than a repository of general precepts. The second is Metcalf's emphasis on the unusually high degree of access shown by the plaintiffs in that case. Ultimately, Metcalf may have little application in cases in which the plaintiff on summary judgment cannot establish such an extraordinarily high degree of access by the defendant to the plaintiff's copyrighted work.