Petition for Writ of Certiorari — Litchfield v. Spielberg

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84 7 J l 4 9 Office ap aegis US

No. nee QY 1004

In the Supreme Court bfthe« |

United States

October Term, 1984

LISA LITCHFIELD,

Petitioner,

VS.

STEVEN SPIELBERG: MCA, INC.; UNIVERSAL

STUDIOS, INC.; EXTRA-TERRESTRIAL

PRODUCTIONS; KATHLEEN KENNEDY;

NED TANEN; and MELISSA MATHISON,

Respondents.

ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

PETITION FOR WRIT OF CERTIORARI

RALPH FRANCIS SERVER

LAWRENCE RUBEN BARBA

8306 Wilshire Boulevard

Beverly Hills, California 90211

(213) 653-9670

(213) 859-1321

Counsel for Petitioner

QUESTIONS PRESENTED

Was it the intention of Congress under the language of the new

to make a clear distinction between the reproduction right and the

derivative right, thus recognizing that infringement of a derivative

use is entirely different and requires the application of a new

standard to prove infringement?

Whether it is a violation of the due process clause of the United

States Constitution for a judge. in open court, to deny plaintiff's

motion for summary judgment admitting that she had not read the

evidence while at the same time taking defendants’ motion under

submission, and then granting said motion, and then again, the

Court of Appeals in what it termed a de novo hearing refusing to

review all of the evidence submitted to the lower district court.

Did the lower courts abuse the summary judgment technique :n this

when there were many similarities between tne two works.

admittedly above stock scenes, thus demonstrating that defendants

did not sustain their burden of proof under Federal Rule 56 (that

defendants must demonstrate that there are no material triable

issues of fact and that the case is meritless), and therefore depriving

plaintiff of her constitutional right to trial by jury?

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TABLE OF CONTENTS

Page

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Constitutional Provisions Involved .............ccceeeeeeeees 2

Tee ee Die baek eae he eee becdekews 2

initial Basis for Federal Jurisdiction. .......6cccccccccvccccces

mensone Tor Gormmting the Writ... ccc ccc ccccccscccccccces 2

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1. The plain meaning of the statutory language

ecco ets eaweev ences ¥eeescesees 4

Il. The extreme substantial similarity test of the

Ninth Circuit improperly focuses on differences

between works rather than similarities and is not

the standard laid down by Krofft as it is a harsh

variant of the lay observer test which extreme

identity is an impossible burden to meet and

effectively takes the heart right out of the Statute ......... 6

II]. Where a Civil Jury is demanded, the Court ona

Summary Judgment motion may not weigh the

evidence so as to deprive the litigant of the right

to trial by jury or due process of law .................008- 9

EE ee ee a ee eee 1]

1. The plain language of the New Copyright Act of

1976 presents a straightforward question of

Statutory Interpretation which failure to apply

distorts the Federal Copyright Scheme.................. 11

(a) The Derivative Right and the Right to Copy

Ee eee rer err Te rere iI

(b) The New Act Requires a New Standard for

Measuring Infringement of Derivative Rights ........ 1]

cae iaviccedunewecvewe 12

re Sek eden eeeheesactenee pees 13

(i) Tee EPOCtTeme OF EGUIVAICRIS ..... 2c cccccccccccces 13

(a> THe COUMINCTCER! TOMMEIION.. 0... cer secccsecccccss 17

(h) The Law Must Have a Principle of Growth.......... 19

Il. The extreme substantial similarity test of the

Ninth Circuit is so narrow as applied and so

unreasonable on its face as to make the

protection granted by Congress totally ineffectual ........ 19

(a) Denial of due process of law and right to trial.... 19, 20

(b) The lower courts failed to assess similarities

ey SN NS One iodo is 0 Sl 00% 00 hoe 21

ed SI FTI oo oo so endo bcc ceed ecnueseas 23

Ce Fe ee I ie i on ea ie ev estas satse ses ies 26

(e) Copyright in American Property Law............... 27

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TABLE OF AUTHORITIES CITED

CASES

Page

Arlington vs. City of Fairfield, Ala., 464 F.2d 687 (1969) ...... 20

Boosey et al. vs. Empire Music Co., Inc., 224 Fed. 646

Ce Oe, Fee os sees cease eratenaseeciereranse ness 25

Arnstein vs. Porter, 154 F.2d 464 (2nd Cir. 1946) ............. 7

Atari, Inc. vs. North American Phillips Consumer

Electronics Corp., 672 F.2d 607 (7th Cir. 1982) ............ 12

Boeing vs. Shipman, 411 F.2d 365, 374 (Sth Cir. 1919)......... 9

Coleur International Ltd. vs. Opulent Fabrics, Inc.,

Fae FF. De TE re Bs hi he Wan oeevivriesccads 25

Dellar vs. Samuel Goldwyn, Inc., 104 F.2d 661, 662.......... 19

Eden Toys, Inc. vs. Marshall Field and Co., 675 F.2d 498

Pe er ee he re rere es aren 22

Fink vs. Goodson-Todman Enterprises, Ltd., 9 Cal.

App. 3rd 996, 1008; 88 Cal. Rptr., 679 (1970) ........... 4,5

Gracen vs. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983) ...8

Gross v Southern Ry. Co., 414 F.2d 292 (1969).............. 20

Heim vs. Universal Pictures Co., 154 F.2d 480............... 25

Higgins vs. Baker, 309 F. Supp. 365 (DCNY 1970)........... 25

Hoehling vs. Universal City Studios, Inc., 618 F.2d 972 (1980). .7

In Re Trans Alaska Pipeline Rate Cases, 436 U.S. 631 at 643

CORFEE «inn oceans Gw ene coke beset eds ei te caters 27

Jasc 1 vs. Fonda, 526 F. Supp. 774 (C.D. Cal. 1981), 698 F.2d

Se a Ws ose cauccenccussraeeiessccreiess 8, 20

Landsberg vs. Scrabble Crossword Game Players, Inc.,

Nos. 80-6083, 82-5467, 82-5504 Fed. (9th Cir. 1984) ......... 7

Litchfield vs. Spielberg, 736 F.2d 1352 (9th Cir. 1984) .. 9, 10, 20

Lone Ranger Television, Inc. vs. Program Radio Corp.,

Poe wg BS A er er are err 26

Mathews Conveyor Co. vs. Palmer Bee Co., 135 F.2d 78, 85

gS A Or eT er rere eee eee rey ore Teer ree 19

McMahon vs. Prentice Hall, 486 F. Supp. 1296, 1304

FT eee Tee Oe ey ry Per ee 9

Midway Mfg. Co. vs. Bandai- Antes Inc., 546 F. Supp. 125

CORN ns Kev eo cdnardan teens ecdeeircaneeesaeeiaerotaat 10

Neely vs. St. Paul Fire & Marine Ins. Co., 584 F.2d 341

rr re re eae ee 20

Nichols vs. Universal Pictures Corp., 45 F.2d 119, 121

CRE OW. THe ha nveddnteveuertedsceckeeeer ees 16

North American Co. vs. Securities and Exchange

Commpitaiion, 53a Fae. Seek Ss oe kei hae eee 20

Overman vs. Universal City Studios, Inc., No. 82-3604

Ce Ee Fe as eas cesasee keer ce bees eee 8

Peter Pan Fabrics, Inc. vs. Martin Weiner Corp., 274 F.2d

SS, GP Tae GW. Tee a 66 thes 40sec e e 23

Pignons S.A. de Mechanique vs. Polaroid Corp., 657 F.2d

See, SEO CE Ci. Fee v0 des dake scaer ceases 8

Planters Manufacturing Co. vs. Protection Mut. Ins. Co.,

sae Fae Gere BP Gt Cs Fee oon nek cee cnevasevccrses: 9

Sayre vs. Moore, 102 Eng. Rep. 139, 140 (1784) ............. 17

See vs. Darang, 701 F206 147 Gl Cet. TORS) cccedccctesceces 16

Sid & Marty Krofft Television Prods., Inc. vs. McDonald's

Comp... S45 F.2e CEST Glee Oe, TPE 6 ck evedaeeass 7, 20, 26

Twentieth Century Fox Film Corp. vs. MCA, Inc., 714 F.2d

Sar CoG, Foe vetnrtecicievaceesiauecee oe 8, 9, 20

United States vs. Diebold, Inc., 369 U.S. 654.......... 00005. 10

Warner Bros. vs. American Broadcasting Company,

Tae Tae Cae Ca Ci 6h tne vdekceeedace te cesssieeen 21

UNITED STATES CONSTITUTION

Fern AOR. oa on 6c een bc isssadlieecieneeeres 2, 19, 20

OVER ADIOS «oo cicceccnvesecexesucneéaeeseeeeee 22

Artes 1, Section &, Citas © oc cce ss bavveniee0hne cube 23

UNITED STATES CODE

17 U.S.C.

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DISD + oo 600 cen csseuenenvensGenteuneelnee 4,5, 11, 26

DOSER 6 00.0.0 5546s 00e ncceuandeds arcane cenene 4,5, 6, Il, 26

BOSE be civeteesécdsceecuveyendetééesneadeuerieteee 26

TF UG. BIGe) FOGG «0 00 eee ce cccndndevebeius onesie 28

28 U.S.C.

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§ 1338(a).............. UE TE TT Te EO r re re Se me 2

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OTHER AUTHORITIES

30 J. Copr. Soc’y, Goldstein, Derivative Rights and

PPE PE eT rrr er rrr rer rire Tre 1]

2M Nimmer, Copyright, §8.09{a], 1981 ..........-- ee ee ee eee 21

3M Nimmer, Copyright, §13.03[b], 1981 ..........-2-. ee eee 21

Holt, Books Into Movies: The Big Compromise, Part II, 219

Publisher's Weekly (Jume 5, 1961)... cccsccccccccvcscceces 17

Chaffee, Reflections on the Law of Copyright, 45 Colum. L.

Pee; CHE xk okvde sci vbweecesdeweabersesbascceereteens 16

Cardozo, The Growth of the Law, 20 (1924) ..........+2006- 19

Orwell, 1/984, Harcourt, Brace, Janconovich, 1949............ 23

Atkins, Method to the Madness, Hollywood Explained,

SE GSE 6 ob 6 a daudnanddhccedineedeuesenterieus steers 18

2A Sands, Statutes and Statutory Construction, 47.07

CBD: FST oo vce vcs ssecvedecssevesusesetedeneveeseees 27

Kaminsky, John Huston: Maker of Magic, (1978).........+... 17

H.R. Rep. No. 94-1476, 94th Cong., 2d Sess. (Hse. Report) ....5

No.

In the Supreme Court of the

United States

October Term, 1984

LISA LITCHFIELD,

Petitioner,

VS.

STEVEN SPIELBERG; MCA, INC.: UNIVERSAL

STUDIOS, INC.; EXTRA-TERRESTRIAL

PRODUCTIONS; KATHLEEN KENNEDY:

NED TANEN; and MELISSA MATHISON,

Respondents.

ON PETITION FCR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

PETITION FOR WRiT OF CERTIORARI

OPINIONS BELOW

The July 6, 1984 opinion of the Court of Appeals is reported at

736 F.2d 1352 (1984) and is set out in Appendix A to this petition.

The June 16, 1983 Memorandum Opinion of the United States

District Court for the Central District of California ts officially

unreported and is set out in Appendix B to this Petition.

JURISDICTION

A petition for rehearsing was denied on September 28, 1984. This

Court's jurisdiction is invoked under 28 U.S.C. §1254(1). The filing

period for obtaining a Writ of Certiorari is ninety (90) days from

entry of judgment. 28 U.S.C. §2101(c).

CONSTITUTIONAL PROVISIONS INVOLVED

Article I, Section 8, clause 8 of the United States Constitution

provides in pertinent part:

“The Congress shall have the pewer...to promote the

progress of science and the useful arts, by securing for limited

ttmes to authors and inventors the exclusive right to their

respective writings and discoveries.”

Sth Amendment

No person shall be “deprived of life, liberty, or property, without

due process of law.”

7th Amendment

“The right of trial by jury shall be preserved...”

STATUTES INVOLVED

Pub. L. No. 94-553 (October 19, 1976), 17 U.S.C. Section 101 er

seq., effective January |, 1978.

STATEMENT OF THE CASE

Petitioner is an author and playwright. On Augusi 3. 1982, she

commenced an action for copyright infringement against the named

defendants. A Lanham Act violation was alleged as well as pendent

state claims. On June 16, 1983, a Judgment was entered against

Petitioner and on July 13, 1983 a timely Notice of Appeal was filed

with the United States Court of Appeals for the Ninth Circuit. On

July 6, 1984, the Court of Appeals rendered its opinion affirming

the Judgment below.

INITIAL BASIS FOR FEDERAL JURISDICTION

Jurisdiction of the federal courts was based on 28 U.S.C.

§ 1338(a) and § 1338(b).

REASONS FOR GRANTING THE WRIT

This writ is prompted by the new Copyright Act of 1976 and

seeks this high court’s interpretation of this new act. It is .

Petitioner's contention that congress’ intent was to make a clear

distinction between the reproduction right and the derivative right.

No court has yet realized that infringement of a derivative use ts

entirely different from infringement of a reproduction right. The

new act of 1976 contains a broad and expansive definition of a

“derivative work” which specifies nine examples and any other form

in which a work may be recast. transformed or adapted.” In order

to be an infringement, the derivative work must be “based upon”

the copyrighted work. In other words, the derivative work must

“incorporate the copyrighted work in some form. This right allows

the author to exercise creative expansion of his work, thus

recognizing the important economics of the copyright incentive -

which is to encourage and attract investment in the work itself.

The author has the exclusive right to prepare derivative works from

his original work and more often than not, others infringe that right

with impunity. Congress recognized the accelerating technologic

developments in communications and that the law would have to be

flexible enough in a modern framework for growth and change.

As Barbara Ringer noted: “Through foresight, not ignorance, the

1976 legislators consciously left certain issues open for further

interpretation or later consideration.” The salient issue in this case

is to define what constitutes infringement of the right to prepare

derivative uses.

This case also raises the important question of the standard of

review to be applied when analyzing a copyright claim. The lower

courts traditionally required three elements of proof by the

plaintiff: ownership, access and substantial similarity. The Krottt

decision, prior to the new act, announced an additional test bi-

furcating idea and expression. The Court of Appeals in the instant

case, added an additional element: now the court would determine

whether there is substantial similarity in the expression of the idea

as a matter of law, thereby circumventing the right to trial by jury

and determining “protectibility of expression” by unilaterally

analyzing the “ideas” and the “quantum of expression.” This

standard of review mischaracterizes the law. Justice Hugo Black

warned that “...the idea of summary judgments as time savers Is a

snare and delusion and the best service that could be rendered in

this field would be to abolish summary judgment procedures, root

and branch.” A motion for summary judgment cannot be entrusted

to the discretion of a trial judge. If there is a genuine issue. the

motion cannot be granted.

The primary emphasis of the new Copyright Act of 1976 Is to

protect creative people, the artists who are less than ten percent ot

the population even though their resources create all of our

communications. The outcome of this case will affect each and

every one of these artists in this nation. They conventionally work

under hardships wherein they must first create and then hope for

financial remuneration; and now, with the ever-increasing threat of

plagarism and a lack of protection of their primary property. the

fate of the profession is at stake. This. in turn, effects the entire

Entertainment Industry which is in dire need of revitalization.

SUMMARY OF ARGUMENT

I. The plain meaning of the statutory language should be

followed.

The 1976 Copyright Act (hereinafter “new Act”) significantly

modernized copyright law. It also distinguished the reproduction

right from the derivative right.

This case concerns the meaning of a carefully drawn statute,

ignored by the District Court, given scant attention by the Court of

Appeals, and explicitly condemned as frivolous because petitioner

sought to have her cause decided under the language of the new

Act.

The district court did not address this issue but the Court of

Appeals, in what it termed a de novo review, suggested that a work

is not derivative unless it infringes the reproduction right

§ 106(1).

Petitioner alleges that the new Act advances expansionary trends

in protected rights and accommodates the bundle of rights

explicitly granted to authors. Derivative rights concern not only

authors but diverse interest groups as well. The Congress which

drafted the new Act did so in express recognition of a broad

definition of a derivative work. Simply stated, a work is a derivative

work if it is based upon one or more pre-existing works.!

'To be “based upon” a pre-existing work, a derivative work must

incorporate in some forma portion of that pre-existing work. The reason is

that copyright protection extends to the tangible fixation of the expression

of ideas in a pre-existing work, and not to the ideas themselves. 17 U.S.C.

102. The direct focus of this case is the application of a single sentence, the

definition set out in §101 as it pertains to §106(2) and §SOI(a). In

approaching the task of construction, these sections must be read in

accordance with the overall purpose of the entire act — equal protection for

authors and a little less leeway for defendants’ privileges. It is a balancing

act with more recognition of plaintiffs’ rights. In 1970 one judge defined

“based upon” as something which recognizes varying levels of creation.

Judge Reppy said, “Probably the similarities would not have to be as

pronounced...” Fink vs. Goodson-Todman Enterprises, Lid.,9 Cal. App.

3d 966, 88 Cal. Rptr. 679. The exclusive right to prepare derivative works

is a strong indication of congressionai intent that “derivation” be employed

as the standard of copyright infringement. In addition, the alternative

The new Act provides a copyright owner with a number of

different rights. They are the exclusive right (1) to reproduce the

WORK in copies; (2) to prepare derivative WORKS based upon the

ORIGINAL WORK; (3) to distribute copies; (4) to perform the

WORK publicly; (5) to display the WORK publicly. 17 U.S.C. § 101.

The derivative right, according to the House Report on § 106,

overlaps the reproduction right to some extent. H.R. Rep. No.

94-1476, 94th Congress, 2d Sess. p. 62 (1976); 17 U.S.C. page 101

(hereinafter referred to as “House Report”):

“It is broader than that Right, however, in the sense that

reproduction requires fixation in copies...whereas the

preparation of a derivative work...may be an infringement

even though nothing is even fixed in tangible form.” =~

The House Report makes clear that the question to be asked in

determining if a work is derived from a copyrighted work is whether

or not the later work is based upon the original:

“the definition in §101 refers to ‘a translation...dramati-

zation, fictionalization, motion picture version...abridge-

ment, condensation, or any other form in which a work may

be recast, transformed or adapted.’”

This language is clear, unambiguous, and quite apparently an

expression of legislative intent. To be a derivative work, the second

work must be based upon the original. The language is enlightening

in light of past judicial decisions which have attempted to face it.

“*Based upon’ does seem to be something a little different than

having substantial similarity...the varying level of creation is

clearly recognized.’”

Fink vs. Goodson-Todman Enterprises, Ltd., 9 Cal. App. 3rd 996,

1008; 88 Cal. Rptr., 679 (1970).

The next sentence in the House Report strengthens this view:

“Thus, to constitute a violation of section 106(2), the in-

fringing work must incorporate a portion of the copyrighted

work in some form.”

(p. 62: 17 U.S.C.A. at 101; emphasis added.)

Hence, to constitute a violation of the derivative right, the second

work will be based upon the original work and will have recast,

recovery theories under the old Act were simply a “make-shift” for the old

Act’s failure to function in a large portion of its intended area. The new

Act, however, is surprisingly efficient as it is total in its spectre of

preemption. Economic and literary reality require that authors be

protected in their writings in toto by the Copyright Act itself.

transformed or adapted it into another form. This is the language of

the legislature that wrote the Act. The statute is intelligible and

sensible when its plain mandate is observed.

Contrasted with the above is the language of the House Report in ‘

explaining infringement of the reproduction right. § 106(1). 3

“A copyrighted WORK would be infringed by reproducing it

in whole or in any substantial part, and by cupnceing it

exactly or by imitation or simulation.”

(House Report, page 61; 17 U.S.C.A. at 101; emphasis ndiled. )

The Congress clearly recognized the distinction between the

derivative right and the reproduction right. )

Ultimately, the Court of Appeals ignored Congress’ intent. Its

basic objective was to perpetuate the status quo ante of extreme

privilege to defendants. On the other hand, the Congress has shown f

a very special concern for authors by distinguishing those bundle

of separate rights.

The reproduction right and the derivative right are not the

same.? If these two rights are not distinguished by this Supreme

Court, then the derivative right will be lost as it is construed out of

existence, becoming only an ignored adjunct of the reproduction

right. This important part of the new Act must not be so disce" '

TRE RENEE PET RAT ALS

ll. The new extreme substantial similarity test of the Ninth

Circuit (an “identity test”) based on differences between works

rather than similarities is not the standard applied to works of

fiction and finds no support in law anywhere in the nation, neither

in Congress nor in the Courts. It is a harsh variant of the lay

21t is difficult to understand why the leading commentator on copyright

law concludes that the grant of the right to prepare derivative works is

superfluous, effectively replicating the right to reproduce and the right to

perform. 2 M. Nimmer, Copyright §8.09[A] (1981). Another commentator

blames the Courts for failing to draw a “principled line capable of

separating derivative rights from reproduction rights.” 30 J. Copr. Ssc’y,

Goldstein, Derivative Rights and Derivative Works, at 215 (1983).

Professor Goldstein comments on the handful of cases which have

attempted to deal with the distinction’s full implications.

31n all fairness to the Ninth Circuit, some justification for its disregard '

for §106(2) can be attributed to Nimmer’s lead. In his treatise on copyright é

law more than twenty years ago, Professor Nimmer defined a derivative

right as one which is substantially copied from a prior work. Happily, the

Congress in 1976 did not adopt his definition. This also explains his total

disregard for § 106(2) as the replication of § 106(1). Whereas Nimmer saw

no distinction, Congress explicitly did.

PRETTY Bh ACR OSE

ESE IT ee ert cere meme < mem Rm 8 anti ome ene em

observer test which extreme identity is an impossible burden to

meet and effectively takes the heart right out of the statute.

This new ‘identity test’ is so extreme that an author has virtually

no protection. The Ninth Circuit’s new test is a dangerous precedent

and no author is safe unless the accused work is an exact duplica-

tion. The decision in Litchfield is the logical extension into fiction

of the holding in Landsberg vs. Scrabble Crossword Game Players,

Inc., Nos. 80-6083, 82-5467, 82-5504, __ F.2d __., ___ (9th Cir.

1984). This case followed the lead of the 2nd Circuit decision in

Hoehling vs. Universal City Studios, Inc., 618 F.2d 972 (1980),

wherein minimal copyright protection is afforded to works of

history even in a fictional context. Thus, to apply an extreme

substantial similarity test to works of fiction as was done in works

of fact like Landsberg and Hoehling is a reactionary departure from

tradition and a perversion of the law.

The Ninth Circuit’s extreme interpretation of the substantial

similarity test would require a virtual identity as to both ideas and

expression. The Circuit, in an uninterrupted string of cases, has

held that unless both prongs of the Krofft test are met, the jury will

not be permitted to decide the infringement issue. This approach

not only invades the province of the jury but risks elimination of

any copyright protection for any work unless the accused work is an

exact copy of the original. By focusing solely on the differences, the

new test requires virtual identity or extreme substantial similarity.

This test undermines the whole copyright scheme.

Prior to the enactment of the new Act, once ownership was

established, the test to prove infringement was to show access and

substantial similarity. Assuming access, if there was substantiality

of ideas, then the trier of fact would decide substantial similarity of

the expression of those ideas. Thus, a two-step process was

required. The Court, however, could determine the works were

similar and usually for illustrative purposes only, and, as an aid to

the Court, the plaintiff would demonstrate that issue by compiling a

list of similarities between the accused work and the plaintiff's

work. Once the Court was satisfied that there were sufficient ideas

common to both works, then the trier of fact was permitted to

determine the extent of the similarities in expression. The test was

derived from Arnstein vs. Porter, 154 F.2d 464 (2nd Cir. 1946) and

is still good law. The case of Sid & Marty Krofft Television Prods.

Inc. vs. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977) re-

affirmed Arnstein by stating that only a trier of fact should decide

the issue of similarity of expression. Krofft extensively quoted

Arnstein and specifically stated, at page 1165, that, (except for one

remark), Arnstein has been “accepted by other Courts, that its tests

“have consistently been approved by this Court,” and that it is “still

good law.”

The Ninth Circuit’s wide departure from Krofft is inexplicable in

Jason vs. Fonda, 698 F.2d 966 (9th Cir. 1983). The requirement that

both prongs of the Krofft test be satisfied is in conflict with Krofft

supra and Twentieth Century Fox Film Corp. vs. MCA, Inc., 714

F.2d 1329 (9th Cir. 1983), and with its own statement that if triable

issues of similarity of ideas are found, a trier of fact-—not a court ;

deciding only issues of law—is who must decide the iss''e of

similarity of expression.

The point that cannot be stressed strongly enough is that the

Court must be looking for a triable issue of fact. That is, the issue is

whether reasonable minds could differ, and, if so, the issue should

be resolved by way of trial. Jason, with its new test, no longer

allows authors to go to trial even where the ideas are similar.

Instead, the Court, in its newly acquired role, may step into the

shoes of the trier of fact and decide that fact pro tanto. Overman vs.

Universal City Studios, Inc., No. 82-3604 (C.D. Cal. 1984).

The Court below committed an error so gross in its implications

that it must be corrected immediately. The moving defendants

below were not entitled to summary judgment because a genuine

issue of material fact had been shown. This is so because a dispute

of fact is “material” when it “affects the outcome of the litigation”

and is “genuine” if manifested by “substantial” evidence “going

beyond the ailegations of the complaint.” Pignons S.A. de

Mecanique vs. Polaroid Corp., 657 F.2d 482, 486 (Ist Cir. 1981).

In filing their motion, respondents assumed the burden of demon-

strating that there were no genuine issues of material fact. Certainly

the significance of the similarities is material because a too narrow

test or an improper analysis of the evidence will adversely affect the

outcome of litigation not only in this case but in all cases that follow

in the Ninth Circuit and elsewhere.

Finally, if it is true that a work is a derivative work only if it is

substantiaily different from the original or grossly different, as has

been held in Gracen vs. Bradford Exchange, 698 F.2d (7th Cir.

1983)—then, on balance, if a work must be substantially similar to

constitute infringement yet at the same time be substantially

different to qualify for its own copyright — where, then shall the line

be drawn on this conflict — especially where a later derived work is

transferred to the screen? E.T. is substantially similar in its

“essence” and “structure” to Lokey yet at the same time it is |

substantially different in some minor details. With authority from

the author of Lokey, E.T. could have qualified for its own copy- —

right since defendants had changed enough to qualify for same.

Thus E.T. is the new Act’s exemplar of derivation without consent,

to-wit: a derivative work is an “infringing” work if it is prepared

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without the consent of the author and is “based upon” a prior work

or works. Consent to prepare a derivative use is an absolute require-

ment of the law where “potential uses” are concerned. The prepara-

tion right is just such a potential use protected by the law.

I1l. Where a civil jury trial is called for, the Court on a summary

judgment motion may not weigh the evidence so as to deprive the

litigant of the right to trial by jury or due process of law.

The vast majority of copyright cases in recent years have been

tried to a court without a jury. Under such circumstances where

trial by jury is not demanded, a judge is in a good position to draw

certain inferences without resort to trial. In a copyright case, a

judge may be warranted in concluding that no reasonable jury

could conclude that th= works are substantially similar under the

“intrinsic” test of Krofft, supra, because he is in a position to do so.

But where, as here, a jury is called for, the litigant is entitled to have

a jury draw certain inferences or conclusions. Only if there is “a

complete absence of probative facts” to support a particular

inference, Planters Manufacturing Co. vs. Protection Mut. Ins.

Co., 380 F.2d 869, 874 (Sth Cir. 1967), may the Court bypass the

jury. Or, if “reasonable men could not arrive at [but one] verdict.”

then summary judgment is proper. Boeing vs. Shipman, 411 F.2d

365, 374, (Sth Cir. 1969). Thus, where the evideniiary facts are not

disputed, a court in a non-jury case may grant summary judgment

if trial would not enhance the ability to draw inferences and

conclusions. But summary judgment is not appropriate if the same

case is to be tried to a jury especially where, as here, the inferences

io be drawn are genuinely disputed. For example, a list of unique

and striking similarities was carefully prepared to show essential

similarities between the works in their proper sequence so as to

avoid a charge of abstraction or exaggeration, infra, footnote 5.

The Court admitted in its opinion that “in the past” it had “relied

on such lists of similarities” which in fact do exist and cited

Twentieth Century Fox, 715 F.2d at 1329 n.5, but that in Litchfield

they would be cautious where “the list emphasizes random

similarities scattered throughout the works.” The Court cited

McMahon vs. Prentice Hall, 486 F. Supp. 1296, 1304 (E.D. Mo.

1980), and justified use of a standard applicable to factual works as

if it were the test for all works. This is clearly erroneous.

The Court also erred when it conceded the list of similarities and

then denigrated its importance by weighing the inferences to be

drawn by declaring that the carefully prepared list, unique to Lokey

and literature, was “inherently unreliable.” Litchfield, 736 F.2d, at

1356. Whiie the Ninth Circuit’s inference may be conceivable, it

certainly is not one that a jury would be compelled to draw.

The Supreme Court of the United States has already held that

on a motion for summary judgment a court must draw the inference

most favorable to the party opposing the motion. United States vs.

Diebold, Inc., 369 U.S. 654, (emphasis added).

In this instance, the Petitioner had a right to all reasonable

inferences in her favor. Instead, the inferences were presumed in

favor of defendants. The question decided unfavorably against

petitioner was whether plaintiff's work constituted a “protectible

expression of ideas.” The Ninth Circuit improperly held that

petitioner's “expressions” cannot sustain a copyright as a matter of

law. As a matter of fact, the Court does not contend that the

similarities do not exist, but only that the similarities as do exist are

merely at the “general level.” Litchfield, 736 F.2d 1352, at 1357. The

Court erred as a matter of law. It assumed that the abstract idea of

aliens landing on Earth, befriending children and engaging their

assistance to return home includes the treatment of that idea as

well. If an idea is merely something in an undeveloped state, then

the development of that idea is its expression. Thus, anything in

addition to the basic idea that the works have in common is

necessarily in the area of expression. If the Ninth Circuit's

reasoning is accepted by this Court, a plagiarist could aiways avoid

liability merely by describing a plaintiff's work in great detail and

then labeling that description the ‘idea’ of plaintiff's work. The

‘idea’ of any work could always be defined in such detail that the

description of the expression would add nothing new to the idea,

thus allowing a defendant to engage in all but verbatim copying.

See Midway Mfg. Co. vs. Bandai-America Inc., 546 F. Supp. 125

(1982). .

With the idea of petitioner’s play once identified, it becomes clear

that petitioner’s copyright merits protection. The idea of peti-

tioner’s play is relatively simple. It is the story of two little lost

aliens, marooned on Earth, and helped by children in their efforts

to get back home. Thus, in expressing their version of the same

idea, it was not necessary for respondents to mimic petitioner's

expression of this idea, which involves such elements of expression

as are listed and described in this brief in footnotes 5 and 17, infra.

Respondents can say what they will, but the work is what it is.

Respondents did not “buy it” from Litchfield. They either “created

it” independently, or they did not. Respondents admit having

received the copyrighted work and have conceded the issue of

access.4 Respondents have not proven independent creation. They

have merely denied that the similarities are of any consequence.

They have been labeled “general ideas,” and therefore, not the

subject of copyright. This narrows the law beyond all reason. It

destroys the Copyright Act; it makes a mockery of it; it creates

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intolerable uncertainty for every author in this nation. Indeed, the

new Act giving authors specific exclusive rights to their works has

not been given the reasonable application intended by Congress and

has become totally ineffectual, especially where, as here, giant

corporate interests and profits are at stake.

ARGUMENT

1. The Plain Language of the New Copyright Act of 1976

Presents a Straight-forward Question of Statutory Interpretation

Which Failure to Apply Distorts the Federal Copyright Scheme.

The unsoundness of the Court of Appeals’ opinion is readily

apparent when Section i06(2) of the New Act is viewed in

conjunction with §106(1) and 101 which defines a derivative right.

The rights and obligations created by the Act should be followed in

accordance with its plain meaning. The lower Courts failed to focus

on either the meaning of the statutory words or their significance in

the context of the new Act.

(a) The Derivative Right and the Right to Copy Under the

New Act.

As between the derivative right and the right to copy, one

commentator has said:

“It is that point at which the contribution of independent

expression to an existing work effectively creates a new work

for a different market.”

Goldstein, Derivative Rights and Derivative Works in Copyright,

30 J. Copyright Soc’y U.S.A. 209, 217 (1983).

Professor Paul Goldstein of Stanford University has succinctly

proposed a new standard for measuring infringement of derivative

rights.

(b) The New Act Requires a New Standard for Measuring

Infringement of Derivative Rights.

According to Goldstein, infringement will necessarily differ from

the measure employed in cases involving reproduction rights: “Yet

4Since respondents initially did not desire to dispute access. preferring

instead to waive that right. this dispute concerns unfair use of the

copyrighted work. The real question is whether. having access, the

defendants have made an unfair use of a sufficient amount of the plaintiff's

copyrighted matter to justify trial by jury on the question of infringement.

Once access is no longer in issue it is always a “fair use” question. See

Shipman vs. R.K.O. Radio Pictures, 20 F. Supp. 249.

iii ila

virtually none of the decisions has drawn a principled line capable

of separating derivative rights from reproduction rights, and only a

few have systematically addressed the distinction’s full implications:

How, specifically, must infringement tests be modified to meet the

peculiar needs of derivative rights? The answer to this question is in

the Act itself. Since the new Act expanded the right to prepare

derivative works to ALL forms of copyrighted works, his argument

is that, taken together §§ 102(a): works of authorship, 103: deriva-

tive work, 106(1): reproduction rights and 106(2): derivative rights,

have created an economic incentive which he describes as a

continuum that “may stretch from an underlying novel or story to

the works’ adaptation into a motion picture, its transformation into

a television series, and the eventual embodiment of its characters in

dolls, games and other merchandise.” Thus, the Act’s broad

endorsement of derivative rights may be a signal that Congress

intended a different standard to control where necessary to give

effect to derivative rights. It is not to say that the standard would

radically alter infringement tests but that some modification may be

required to give complete effect to the absolute right to prepare

derivative works.

When a work is reshaped for another medium, oftentimes the

underlying work’s format transfer will transmute expression into

different though equivalent forms. The simplest example is a work’s

translation from one language into another. Without proper

instruction in foreign language, no lay observer would immediately

recognize the following symbols: CU AT R Oand FOU R. Two

different languages — different but equivalent as to meaning. Thus,

different though equivalent forms may be the proper focus for

derivative rights and derivative works. It is the same when a play is

transformed into a movie—the trier of fact, upon a proper “jury

instruction,” may easily be educated when assessing an infringe-

ment in this area. It is good common sense and finds support ina

cautionary footnote in Asari, Inc. vs. North American Phillips

Consumer Electronics Corp., 672 F.2d 607 (7th Cir. 1982), wherein

judicial recognition was indicated regarding the difficulty in

applying the “ordinary observer test” across different formats.

implying that it may be easily correctible on a jury instruction.

Needless to say, the rules of the game are as important as the game

itself. To that end, the “audience test” can remain meaningful and

useful.

(d) A Play is Not a Film.

A play is not a film. Its story takes limited form on a stage and

relies heavily on dialogue. A film is the opposite. The script of a

film, of necessity, multiplies with all sorts of additions and

modifications.

(e) From Novel to Play.

The reverse is true when a novel becomes a play. It must be

changed, rearranged, condensed and strengthened.

(f) The Doctrine of Equivalents

Because of the difference in format of Lokey and E.T. (play vis-a-

vis film), the best way to determine infringement is to “see through”

defendants’ production and find a “web of structural dimensions”

similar to plaintiff's material and compare it with plaintiff's play to

see if there are any factual equivalents which amount to

infringement. The “doctrine of equivalents” discounts the presence

of minor changes and substitutions in an allegedly infringing work,

broadens derivative rights, dispenses with any requirement of exact

duplication (“picturization”), and prevents the elevation of form

over substance that might allow a canny plagiarist to capitalize on

the work of another, while at the same time, preventing

contrivances to disguise a piracy.‘

In this instance, petitioner alleges that defendants, without

authority. have infringed her exclusive right to prepare derivative

works. Determination of infringement of this exclusive right is

predicated upon a comparison of the works themselves. The

“equivalency test” is best suited for such a change of format

analysis, but the two most often used tests are the “pattern” test®

and the abstractions test. The former was developed by Professor

SJudge Ferguson of the Ninth Circuit has promoted “doublespeak”

language in true Orwellian prophecy. He said, “Copying is not copying so

long as it is deleted or so well disguised as to be unrecognizable.” The

derivation test challenges such an unwise proposition out of See vs.

Durang, 711 F.2d 141 (9th Cir. 1983), and thus provides the needed balance

of defendant's privileges against the long-awaited rights of plaintiffs.

¢The pattern test is demonstrated as to its structural sequence of events:

E.T. LOKEY

Night. Aliens land on Earthand are Night. Aliens land on Earth and are

exploring the terrain. Air Force — exploring the terrain.

men arrive and make a search. The

alien ET squeals as he flees. The

UFO leaves him behind.

Children are at home playing a

game. Michael, a teenage boy, and

his friend do not allow 10-year-old

brother. Elliott. to play. The inter-

ence is that he cheats. Mother Mary

is at home tending to her duties.

Children are at home playing a

game. A radio bulletin of a UFO

sighting is heard. Lisa, a pre-teen,

does not want to play with brother

Michael anymore and accuses him

of cheating. Father Joseph ts at

Zachariah Chaffee and published by him in the Columbia Law

Review Journal in 1945. The test correlates the designed sequences

of connected incidents between the two works which move the work

The children are getting on her

nerves. Elliott goes outside and

hears noises coming from a shed.

Sensing something strange, he runs

into the house to sound the alarm.

Mother is annoyed and aggravated

over Elliott's antics. But her ma-

ternal instinct takes over: there

could be something out there. The

children leave. Harvey, the family

dog. is in the house. Mother is

saddened by her marital situation.

She is a divorcee. She is without a

man. The children search outside.

find nothing.

Late that night, Elliott searches the

woods, finds ET, uses M&M can-

dies to lure him home.

Elliott's brother, Michael, and sis-

ter, Gertie, meet ET. Gertie screams,

ET screams back, thinking it is a

greeting. Mother Mary enters the

room but they hide ET in the closet.

Later, when the children are over

their shock, they try to communi-

cate with ET using a globe to de-

scribe where they are on Earth and

trying to find out where ET is from.

ET levitates five clay balls in the air.

demonstrating his psychic powers

and his home in the universe. Allare

awed. (Previously, he brought a

dying plant back to life.)

Elliott becomes telepathically tuned

to ET. Love develops. The children

will help the little creature.

home tending to his work. Michael,

hearing the UFO report, wants to go

out in search of it. Father thinks the

report is hogwash. His male logic

tells him so: it is nothing. He is

annoyed and aggravated. especially

at Lisa. He is out of patience with his

children. Jack, the family dog, is in

the house - his only solace. Father

is lonely and sad that he is without a

woman.

Lisa and Michael search the area

and tind two little aliens. Lokey and

Fu. Michael becomes frightened and

runs home. Lisa remains, tries to

communicate. names the aliens

using the letters of the alphabet

A. B. C. ete. Drings the aliens

home.

Michael arrives home in a panic.

screaming to his father about a green

monster. Later, more chaos and

screaming when Lisa and the aliens

enter their cabin. Lisa’s guests greet

Father. But chaos and screaming

result.

When they get over the shock of the

aliens, they try to communicate with

Lokev and Fu. Father wishes he had

a globe to demonstrate where thes

are on Earth,

Lokey projects a thought form on

the wall, demonstrating his tele-

kinetic power. All are awed. (Pre-

viously, he levitated a rock in the

same way.)

Lisa becomes telepathically tuned to

Lokey. Love develops. Lisa and her

brother Michael will help the aliens.

Father, too.

from cause to effect. The parallels formulated according to the test

are intended to establish or disprove copyright infringement. The

“pattern” test is a refinement of the “abstractions” test created by

When Elliott goes to school, child-

ren are going to dissect frogs in a

science class. Elliott, in tune tele-

pathically with ET makes the child-

ren free all the frogs and saves them

from certain death.

Gertie teaches ET English. ET tells

the children he wishes to “phone

home.” So he makes a communi-

cator device out of household items.

He must the dilemma olf

getting back to his space craft.

solve

The Air Force men continue to

search for ET. Elliott and the alien

go to the woods to try to make

contact with the space craft. ET will

die soon if he does not return to his

craft. Earth’s gravity is too much for

his little body. Elliott and ET fly

through the woods fly with the

use of mind power — ona bicycle.

They crash land. ET must “phooe

home.” They try to make contact

with the UFO. Elliott falls asleep.

and when he awakens, ET ts gone.

Meanwhile, Elliott's mother, dressed

in Halloween costume, silently sits

over candles, a witch’s wand in her

hand. Worried about her youngest

son, she waits, putting out the

candles. with the wand. Elhott

comes back sick. He asks Michael to

find ET.

Michael finds ET and brings him

back. Mother grabs Gertie and runs.

The Air Force men arrive. ET ts

dying. so they try to save him. Eliott

implores him not to die. A plant

dies. ET is revived and the children

Because Lokey and Fu need to solve

their dilemma of how to return to

their space craft, Father suggests

porpoises. The aliens bid farewell to

find porpoises. Fishermen are ,oing

to harpoon them. The aliens free the

and them trom

certain death.

porpoises save

The aliens, with mind power, fly in

search of a witch named Tolle when

the porpoises say she has extra-

terrestrial powers. She may solve the

riddle of their dilemma. They crash-

land in the Andes. The situation

seems hopeless. They will die soon it

they don't get help. Earth’s gravity ts

too much for their littie bodies.

When the aliens come upon the

witch, she is watering dead plants.

She the panics,

screams; they scream back thinking

sees creatures,

it is a greeting. She throws a potted

plant at them. She runs into the

house. The plant comes to life at the

alien’s touch. The witch tries to call

the authorities. They call for help to

“go home.” The witch kidnaps Fu

and Lokey. weak and broken, cries

out, “Mama. I'm coming home.”

Lisa tunes in telepathically to Lokey

and telly Father that they must go in

search of him. He is in danger.

Father agrees and they leave in

search of the little space creatures,

Fu escapes and returns to. tind

Lokey and the witch arguing.

Finally she agrees to help them.

They will find the landing site.

Father. Michael and Lisa appear at

the landing site. Lokey, Fu and the

Judge Learned Hand, who said “as respects plays, the controversy

chiefly centers upon characters and sequence of incident, these

being the substance.” Nichols vs. Universal Pictures Corp., 45 F.2d

119, 121 (2d Cir. 1930). Chaffee, however, explained the refinement.

He said: “No doubt, the line [of infringement] does lie somewhere

between the author’s idea and the precise form in which he wrote it

down...[P]rotection covers the “pattern” of the work...the

sequence of events, and the development of the interplay of

characters.” These are the things that “should not be imitated.”

Chaffee, Reflections on the Law of Copyright, 45 oom. L. Rev.

503, 513-14 (1945).

The idea-expression dichotomy, as has been seen, itiuaned in

the case law and is supported by both tests. The two tests remain a

useful approach for separating infringing from non-infringing

kidnap him and drive him to the

woods. The authorities are in hot

pursuit. ET and the children arrive

at the landing site; he crash lands as

usual. They wait for the UFO. There

witch crash-land and roll in all en-

tangled. All are gathered to meet the

UFO. Father and the witch are

attracted to each other. The witch

realizes that the aliens must go home

they meet Mother, the Air Force

man and Gertie. Mother and the Air

Force man are attracted to each

other. The Air Force man knows

that ET must go even though he had

searched for him for so long. The

parting is time pressured, as others

are in pursuit. Gertie runs toward

ET. Then ET tells her to be good.

turns to Elliott. “Come?” he says.

“Stay.” says Elliott. ET embraces

the boy. “Ouch, I'll be with you

forever, right here.” There is a hint

of a forever bond between the two

worlds. ET leaves in the craft. A

rainbow streaks across the sky. It is

a happy cnding, despite all the

healing tears.

even though she had searched so

long. The parting is time pressured.

Lisa is sad. Ali watch the skies for

the UFO. Lokey and Fu ascend to

the space craft. “Mama. I’m coming

home.” Lokey. A rainbow

sireaks across the sky. It is a happy

ending despite all the healing tears.

cries

The adaptation of these important structural sequences from petitioner's

play is what Judge Hand found to be fatal to the defense in Sheldon vs.

Metro-Goldwyn Picture Corporation, 8\ F.2d 49 at pages 54 and 55. In

addition, in the play, the main cast of characters are these: One single parent

(Father Joseph), two children (Lisa Mari, Michael), two aliens (Lokey, Fu).

one dog with a man’s name (Jack), one main antagonist, female (Tollie the

Witch). In the film: One single parent (Mother Mary), three children (Elliott,

Michael, Gertie), one alien (E.T.), one dog with a man’s name (Harvey), one

works, especially when the ‘essence’ of the work sought to be

protected is a story. It is true that the copyright law does not extend

to any idea or process, etc., and is codified in the singular under 17

'1.S.C. §102{b). The new Act equates far more closely to the

marketplace, than did the old Act. The shift in emphasis from idea-

expression to fair use is exemplified in §§106-118. It asks the

singular question of whether the “use” of the work of one creator by

an imitator is sufficiently harmful to the original work to permit

recovery. It is a real-world question and deals with whether or not

the key elements of a work have been appr« riated. It is a fresh

approach designed to effectuate a re-balancing of the underlying

policies set out by Lord Mansfield —a re-balancing of the essential

and potentially conflicting interests that are at the heart of

“We must take care to guard against two extremes equally

prejudicial; the one that men of ability. who have employed

their time for the service of the community, may not be

deprived of...their just merits and the reward of their

ingenuity and labour: the other that the world may not be

deprived of improvements nor the progress of the arts

retarded.”

Sayre vs. Moore, 102 Eng. Rep. 139, 140 (1785).

The new Act has freed the courts from their non-definitional

wilderness. It is with the hindsight virtue of having faced hard

problems that the congress mandated the courts to reshape their

thinking to the legislative purpose and to the economic realities of

the twentieth century. The courts have but one direction open to

them: to advance the copyright law into the 2Ist Century.

(g) The Commercial Transition.

Novelist Darryl Ponicson’? lamented the “demands of the

medium” of film— simplicity and action. When his novels were “re-

THolt: Books into Movies: The Big Compromise, Part 11, 219, Publishers

Weekly, p. 34 (June 6, 198!). Another example of “transformation” is John

Huston, who, after purchasing derivative rights, made movies “based

upon” the works of numerous authors: Melville, Maxwell Anderson, B.

Traven, Stephen Crane, Arthur Miller, Tennessee Williams, Kipling, etc.

Professor Kaminsky documents in his book, John Huston, Maker of

Magic (1978), how Huston altered the source work — sometimes minimally

as with The Maltese Falcon, more often radically as with the play, Key

Largo— until the transformed film was a personal vision of the director

himself. Huston’s procedure in transforming source works is not at al!

unusual in Hollywood and is the normal mode in which directorial

creativity operates.

cast” for films, he thought them oversimplified and too fast-paced.

But on the “commercial” movie screen they made sense. His book

Cinderella Liberty in its movie form was so different that he tried to

get the studio to change the title. “My story,” he said, “took place in

a hospital. In the movie they opened it up to other locations. Mine

had a somewhat twisted sense of reality; the movie had a reality ‘tne

masses’ will understand. My female character had a harelip, a tin

heart and a way with sailors—she was a good-time girl, a ‘fleet

chick.” In the movie she became the attractive young prostitute

Marsha Mason plays. In the book she had three kids, in the movie

only one. In the book the male character is a failed theology

student; in the movie the only reference to theology is the fact that

his father is a janitor at the local church. If you understood the film

business, you'd see that was a perfectly logical move.”

The above situation is typical of Hollywood. It is the problem of

taking something from one medium and reshaping it to commercial

audiences: How to take a work that may have appealed to a small

audience only and “transform” it into a true rendering on screen of

the author’s original expression, but at the same time attract a mass

audience?

The answer to that question lies in the language of § 106(2) which

understood the “commercial transition” — the end result of which ts

the essence of an original work, now “transformed” as a movie.

8A word of explanation is in order here because of the Ninth Circuit’s

reluctance to actually view the film E.T. Screenplays are “barely readable

conglomerations of dialogue, camera directions, and character analysis.”

C. Atkins, Method to the Madness: Hollywood Explained, 150 (1975). This

is equally true, if not more so, of “continuity scripts.” If the “audience test”

is to be meaningful, the Court was “compelled” to see the film because that

is what the motion picture “audience” saw. The audience did not read a

“continuity script.” Nor could it be expected to understand one because of

its highly technical nature. It would confuse a layman because he could not

meaningfully arrive at the “total concept and feel” of the movie because, for

one, he has not seen the best evidence, which is the film itself, and two,

without training the reading would be impossible. The technical directions

alone would seriously frustrate and distract from not only the concept of

the film but its “feel” as well. Since “substantial similarity” in the case law

prior to the Act was determined by the ordinary lay observer or the

particular audience, the refusal to see the film was an abuse of discretion

and clearly erroneous. Also, since the Ninth Circuit stressed that its review

was de novo in order to correct any errors below, then it should have

“viewed” all the evidence, particularly the film, since it is the subject matter

of the law suit. Defendants admit access for the motion even though the

proof was offered to the Court by way of a rejection letter from Ned Tanen,

the then president of Universal Studios. Litchfield also corresponded with

Spielberg in a letter dated November 18, 1980. Thus, to concede access is a

(h) The Law Must Have a Principle of Growth.

The New Act does not state that a derivative work must be a

“copied” work; it does not state that it must be a substantially

copied work or that it must be substantiaily based upon a prior

work. Copying, as the act makes explicit, is the reproduction right.

Semantics, although given scant attention in many copyright

decisions, are important when dealing with abstract concepts.

Words mean what they mean, and nothing more, to paraphrase

Alice in Wonderland. Copy means copy. “Based upon” means what

it says. “Incorporated in some form,” means what it says. It cannot

be presumed that Congress acted frivolously, or that the derivation

right is a superfluous anomaly, or that it is a pointless addition

to the Copyright Act. Such an interpretation squares with all

accepted rules of statutory construction. Instead it is better to view

the law through Cardozo’s eyes like “the inn that shelters for the

night,” as “not the journey’s end,” but “like the traveller, must be

ready for tomorrow. It must have a principle of growth.”

Il. The Extreme Substantial Similarity Test of the Ninth Circuit

is so Narrow as Applied and so Unreasonable on Its Face as to

Make the Protection Granted by Congress Totally Ineffectual.

(a) Denial of Due Process of Law and Right to Trial.

The Ninth Circuit’s affirmation of the District Court’s opinion

violates “due process” as well as the right to trial by jury, infra. The

redundance and a ruse to destroy the “impact” that this knowledge would

have on a jury. This evidence was revealed at Litchfield’s deposition and

will be presented at trial. But the point here is that defendants admittedly had

the play in front of them and subsequently produced a film similar to the

play in many details. Thus, “fair use” must be determined by a

consideration of all the evidence. See Mathews Conveyor Co. vs. Palmer

Bee Co., 135 F.2d 78, 85 (6th Cir. 1943). Also, Dellar vs. Samuel Goldwyn,

Inc., 104 F.2d 661, 662. The Ninth Circuit “excused” itself from considering

the film by citing Jason vs. Fonda, supra, as authority. (This non-existent

“legal fiction” is as bizarre as the district court’s statement that it would

deny Litchfield’s cross motion for Summary Judgment even though Judge

Hall admittedly had not read the play but would take defendants’ same

motion under submission.) Simply stated, a continuity script can never be a

fair representation because it underscores what the audience in a film is

never aware of —the technical aspects of camera angles and directions. A

film is an audio-visual work with simultaneous presentation of two

dimensional sights and sounds engaging the senses in a unique manner. The

experience of watching a film or reading a continuity script is like

comparing apples and oranges.

%Cardozo, The Growth of the Law, 20 (1924).

Sth Amendment as a constitutional guaranty demands only that the

law shall not be unreasonable, arbitrary, or capricious. See North

American Co. vs. Securities and Exchange Commission; 133 F.2d

148, 154. The lower Courts have been all these.

Respondents state that recent cases have “affirmed that the

intrinsic prong of the Krofft Analysis may be decided on summary

judgment. The derivation of this affirmation is Jason vs. Fonda,

526 F. Supp. 774 (C.D. Cal. 1981).

Jason held, at page 777, and essentially paraphrasing Krofft’s

holding, that if actionable similarity in ideas is found—“then the

trier of fact must decide whether there is substantial similarity in the

expression.”

There can be no doubt that a district court, or a court of appeals,

is not a trier of fact. The Court’s sole function is to determine if

there are factual issues to be tried. See Arlington vs. City of

Fairfield, Ala., 414 F.2d 687 (1969); Gross vs. Southern Ry. Co..,

414 F.2d 292 (1969). The Court is nor trying facts, it is deciding a

pure question of law on sucha motion. See Neely vs. St. Paul Fire

& Marine Ins. Co., 584 F.2d 341 (9th Cir. 1978). The Court cannot

weigh evidence or judge the credibility of witnesses.!®

However, Jason does flatly state in dicta and without citation to

authority or explanation that summary judgment is proper if no

trier of fact could find plaintiff has satisfied both Krofft tests."

The latter statement in Jason is in conflict with Krofft and

Twentieth Century Fox Film Corp. vs. MCA, Inc., 714 F.2d 1327

(9th Cir. 1983), and with its own statement that if triable issues of

similarity of ideas are found, a trier of fact—not a court deciding

only issues of law—is who must decide the issue of similarity of

expression.

State decisis must stand for the proposition that Krofft’s holding

as upheld by Twentieth Century cannot be effectively overruled by

the latter conflicting staternent in Jason, made at odds with both

Krofft and Jason's prior finding, and unsupported by any analysis,

reasoning or authority.

Thus, for example, if there is some evidence of qualitative similarity of

a substantial nature, and evidence to the opposite, the Court cannot weigh

the two, but must permit the action to proceed, for to do so would invade

the province of the jury.

1! From Jason, the cases respondents cite follow without analysis, simply

eventually referring back to Jason; See vs. Durang, 711 F.2d 141 (9th Cir.

1983) makes a similar statement, then cites Jason (which, again, cited no

authority and gave no explanation) as the only authority, at the page where

Jason’s conflicting statements reside. Litchfield vs. Spielberg, 736 F.2d

1352 (9th Cir. 1984), in turn cites See where it, in turn, cites Jason.

EO 8 BE CORE LEE SS Sa Pi cag Sb Es IVE

The logic for the statement in Krofft that only a trier of fact

should decide the issue of “expression similarity” is explained by the

decision but is summarized as follows: (1) If a triable issue of fact is

found, the case is to go to the trier; (2) If a triable issue is found

regarding “idea similarity,” then due to the peculiarly and singularly

factual nature of the analysis of the issue of “expression similarity”

and due to the long-held and frequently reiterated belief that the

observations of the ordinary person are key (i.e., ordinary juror, not

a tenured federal judge), it is best left to the system which is

specifically fitted to test such observations to determine the issue —

the jury system, or trial.

The logic of this position is three-fold. First, it is clear and

straightforward, and Krofft’s entire structure and reasoning

upholds it. Aside from the flat, unsupported statement of dicta in

Jason, and its progeny, the history of copyright decisions supports

it as well, as was fully set forth in petitioner's opening brief. Second,

the Sth Amendment mandates that no person shall be deprived of

life, liberty, or property, without due process of law. The 9th

Circuit’s extreme test is unreasonable. It circumvents notions of

fairness and mocks justice. Thus, petitioner challenges the wisdom

of Jason as law and its application by the lower courts, and instead

relies on the well reasoned opinion by Justice Tang in Krofft. Third,

the 7th Amendment's right to jury trial is not a privilege to be

discarded or disregarded by whim, fancy or policy. It is a right

guaranteed by the Constitution.

(b) The Lower Courts Failed to Properly Assess Similarities

Between Lokey and E.T.

The lower courts looked for differences and, of course, they

found them. Is the test for infringement whether the works are

substantially the same or identical?" This patently different and

12In their brief, appellees made reference as to whether differences

between works were material. Though differences may exist between

works, what is the significance of differences that do not necessarily change

the “essence” or features of the plaintiff's work, but are instead entireiy

additional? Under the new Act, if a defendant incorporates a sufficient

portion of a plaintiff's sequence of events, he cannot escape infringement by

adding original episodes somewhere along the line. Thus Professor

Nimmer’s proposition that “a defendant may legitimately avoid infringe-

ment by intentionally making significant changes in a work,” 3 Nimmer

§ 13.03[B],. requires modification where a defendant slavishly copies the

plaintiff's sequence of events. See Warner Bros. vs. American Broadcasting

Co., 720 F.2d 231 (2d Cir. 1983), where the court attempts to deal with

potential defendants who wish to tread the infringement line in their own

studied efforts to adapt other works without renumeration to their authors.

more burdensome test was suggested by respondents and adopted

by the Ninth Circuit (appellee’s brief, fn. 10). It is at odds with

Krofft and every other circuit in the nation save the 2nd Circuit

which also recently departed from the “audience test.” The audience

test in the case law holds that liability for plagiarism should ensue

when the average person is able to perceive “essential similarity”

among the works in question. The test has traditionally been

accepted by the modern courts!3 and has been the foundation for

determining overall similarities. As to differences, would the

“ordinary observer” note the differences, or would he be “disposed

to overlook them, and regard their aesthetic appeal as the same?”

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

(2nd Cir. 1960). That is the inquiry and it must be decided by the

proper audience — not a tenured Federal judge or judges '4 Thus,

if the foundation for determining overall similarities is the ordinary

observer test, then Judge Wright’s opinion indicates that he

adopted Judge Hall’s approach by improperly focusing on the

differences and not the similarities. The test is whether the

similarities are “material,” not whether the differences are

“material.” To say that that which was not ‘borrowed’ is ‘material’

and therefore non-infringing is to turn the infringement test upside

down, in derogation of the congressional mandate and to fulfill the

Orwellian prophecy of “newspeak” and “doublethink” which

ignores reality and pretends to justice.!5

Thus, if numerous differences are to undercut substantial similarity, they

must be in kind rather than degree. The differences must be “truly

different” else a plagiarist can excuse the wrong by showing how much of

his work he has changed from the prior work. Ultimately, care must be

taken to protect and guard against such appropriation of someone’s work

to the considerable financial benefit of another. The courts must discourage

these facile attempts to “reap where one has not sown,” to cut it at its roots

to deter plagiarism thereby fostering the creativity of authors by rewarding

them through financial gain in their chosen profession.

13 However, the Second Circuit recently departed from the audience test

in Eden Toys, Inc. vs. Marshall Field and Co., 675 F.2d 498 (2d. Cir. 1982),

prompting a sharp dissent from Judge Lumbard.

14Because the Seventh Amendment affords a constitutional right to trial

by jury in civil cases in federal court where the amount in controversy

exceeds twenty dollars, a difficult problem would be encountered were

abandonment of the lay jury — the ordinary person — in favor of a panel of

tenured judges proposed. A copynght panel might be conceivable as an aid

to the trier of fact, but the issue of infringement (“expression similarity”)

must remain with the jury.

The copyright statute gives protection to “the work” in order to

promote the Progress of [the] useful Arts.'® If the qualitative

approach is the approach taken by most courts and commentators

because it seems closer to the purposes of copyright protection, then

the part that makes Litchfield’s work popular and valuable is that

portion upon which it’s popular appeal and commercial success

depends. The proper inquiry is whether the similarities relate to

matter which is the qualitative portion of plaintiff's work and not

whether such material constitutes the qualitative portion of

defendant's work, which in this instance happens to coincide. Thus,

if half of plaintiff's work is incorporated ina film and if this amount

is sufficient in quality and value to be considered “the work” for

purposes of the statute, then it /s “the work” no matter how much

more extensive the accused work may be. Thus, if the similarities

are truly “insubstantial,”!7 then its appropriation will do no harm

to plaintiff, and therefore cannot be considered improper appro-

1SGeorge Orwell was the author of a book entitled /984 which dealt in

fictional form with the methods of totalitarian control of the populace. In

the book, indoctrinal belief systems are the means to absolute power which

denies reality based on environmenta! control. The court system is an

environment unto itself and must take great care not to impose unreal

concepts in defiance of objective reality. As Lord Acton said, “Power

corrupts and absolute power corrupts absolutely.” Our system of justice,

through the appellate process, protects against just such attempts by the

lower courts. It is in the public interest for this high court to keep the lower

courts from paying insufficient deference to the pronouncements of the

legislature.

16 .S. Constitution Article | §8 Clause 8.

17The Film E.T. has destroyed the demand for Lokey. According to

Arnstein, it is a major factor in substantiality. Both works begin the same

way: aliens landing on earth, at night, and children at home playing a game.

In one there is sibling rivalry: a child does not wish to play anymore and

accuses the other of cheating. In the other a child wishes to play with the

others but is not allowed to because he cheats. In both works, the single

parent is at home tending to work. In one work, the radio reports a UFO

sighting and the children wish to search for it. In the other, a child hears

noises coming from a shed, informs the others: they go outside in search of

— what? Nothing. Later that same night the child encounters the alien. In

both works, the single parent is frustrated over the marital situation.

Loneliness. The single parent in both works has one solace — the family

dog. In both works, aliens are found and brought home. In the one, it is

two aliens, in the other, just one. In both works, the alien trips over an

object: in the one, over a garbage can— levitates it in exasperation; in the

priation since it is the harm to the plaintiff's copyright which is the

court’s primary concern.

Petitioner has demonstrated sufficient similarity under any test,

whether under the old or new Act, and should have easily survived a

other, the alien trips over a rock — levitates it for the same reason. Early in .

both works, the alien demonstrates its telekinetic power. In both works

screaming is thought to be a greeting. In both works an alien, through mind

power, projects an holistic map: in the one, it is a globe; in the other, clay

balls are levitated in the air, a map of the universe — another demonstra-

tion of telekinetic power. All are awed. In both works, the lead child

becomes telepathically linked to the alien. From this a bond develops. In

one, the child is a girl; in the other, a boy. Both are about ten or twelve

years old. In both the aliens are friendly, lost, disoriented. In the one, the

alien is left behind by accident; in the other, the aliens accidentally fall out

of the sky. In both the dilemma is getting back to the space craft. In the

one, the alien must figure a way to communicate to the ship, to give its

location. In the other, the dilemma is greater: something to do with the

size of the space ship and Earth’s gravitational force. The space craft can

come only so low while the aliens can levitate only so high. In both the

problem is how to safely get back to the craft, the aliens fighting against

time, survival depending upon finding a solution to their problem before

gravity kills them. In both the answer to the riddle lies in the children, in

their help. In the one, the alien goes into the woods to communicate to the

skies with a make-shift device. In the other, the aliens travel afar in search

of an answer, to the sea, and finally to the mountains. In the search, the

aliens are separated from the children. In both works, the aliens can fly

with mind power but gravity makes landing difficult, sometimes comical.

Both works express the love of life itself, of all living things. In the one,

school children are going to dissect frogs in a science class. Through

telepathy, the alien frees the frogs and saves them from certain death. In the

other, aliens encounter porpoises and fishermen are going to harpoon

them. The aliens save them from almost certain death. In both the govern-

ment is in pursuit and a child is separated from the alien, yet linked by a

telepathic bond. In the one, a child knows when the alien is in trouble; in

the other, the child feels what the alien feels. In both the main antagonist

wishes to capture the alien for fame and recognition, having waited so long

for the encounter. In both the main antagonist has a single mission — to

capture aliens. In the one, the alien dies, is revived and says “phone home,

phone home.” In the other, an alien is dying and cries, “Mama, I’m coming

home.” In the one, after the authorities have captured the alien, the

children kidnap him. In the other, the antagonist captures »ne of the aliens

but he escapes. In both the antagonist finally relents and will help, knowing

that this is how it must be. In both the single parent is attracted to the

antagonist. In both all the key characters come together for the finale at the

landing site. In the one, the lead child bids a fond farewell with the

following words, “I will send you pictures, right here,” points to forehead,

“it will be just like being with you forever.” In the other, a tearful farewell,

“Ouch, I'll be with you forever, right here.” It is all so sad as all farewells

motion for summary judgment. Respondents have argued differ-

ences between the works. Actually, the differences are such as might

deliberately be contrived to disguise the appropriations. Coleur

International Ltd. vs. Opulent Fabrics, Inc., 330 F. Supp. 152

(SDNY 1971).

The combination of plot features and character interactions is the

essence of plaintiff's work. It is both quantitatively and qualita-

tively significant to the play. The equivalent characters found in

respondents’ film are qualitatively important to it. The combination

of plot and character and incidents should have precluded summary

judgment on whether respondents based their work on a material

element of petitioner’s copyrighted play. A triable issue of fact did

are, but it is a happy ending too because (1) a single parent will have a mate,

(2) the children wil! have two parents, (3) false pride yields to love, as it

should, and (4) the world is a better place for the experience. Thus, it can be

seen that the audience test becomes a measure of appropriation of the

appeal is lessened. According to Arnstein, substantially turns on “whether

defendant took from plaintiff's work so much of what is pleasing to the ears

of lay listeners who comprise the audience for whom such popular music is

composed, that defendant wrongfully appropriated something which

belongs to plaintiff.” In this instance, E.T. “relied” on Lokey’s unique

characteristics to create massive audience appeal. See Boosey et al. vs.

Empire Music Co., Inc., 224 Fed. 646 (one brief phrase of a song was

appropriated). The words, “I hear you calling me” was the title of a song

sung by John McCormick. Al Jolson sang a ragtime song called,

“Tennessee, | hear you calling me.” In the former, a living person stands

on the grave of his dead loved one and hears her voice. In the iatter, a black

man wants to go back to his old home in Tennessee. Judge Mayer said:

“The ‘I hear you calling me’ has the kind of sentiment in both cases that

causes the audience to listen, applaud, and buy copies in the corridor on the

way out of the theatre.” At bottom, Judge Mayer recognized that it was the

quality of the matter taken, not necessarily the amount taken, that really

mattered. See also Higgins vs. Baker, 309 F. Supp. 635 (DCNY 1970). It

also was the effect on paying audiences that lay at the heart of copyright

economics.

“ET phone home,” “Mama, I’m coming home.” “I will send you pictures,

right here. It will be like being with you forever.” “Ouch, I'll be with you,

right here.” This farewell scene is so idiosyncratic standing alone, so unique

in its representation as to be considered “eccentric” and thus substantially

similar. Furthermore, it is the timeless quality of the love between alien and

child, best exemplified in the farewell scene which grabs the heartstrings

and sends audiences out of the theatres crying and cheering. See Heim vs.

Universal Pictures Co., 154 F.2d 480. It is not to say that one or two lines of

dialogue will always constitute infringement, but only that a substantial

triable issue of fact did exist regarding the quality of the matter taken for

which petitioner had a duly registered copyright.

exist as to whether the respondents did “improperly appropriate

and use” a qualitatively important portion of the peutener: Ss work

in some form, given the similarities.

The Ninth Circuit has ignored the express intent of Congress set

forth in the portions of the House Report cited and quoted by

petitioner. Instead, it relies on an incorrect application of existing

case law decided before enactment of the statute in 1978, and

subsequent case law, which presumes that the Act was intended in

section 106(2) to be merely a replication of section 106(1). Its

thinking is unsound and incorrect and violates the policy of the new

Act— greater protection for the author (which includes extending

yrotection to the author for life plus fifty years; derivation rights;

adjustments for technology; and termination provisions re:

derivative works, etc.). Ironically, Lone Ranger Television, Inc. vs.

Program Radio Corp., 740 F.2d 718 (9th Cir. 1984), a case decided

within weeks of the instant case by a different panel, recognized the

distinction between the reproduction right and the derivative right.

The panel in Litchfield “condemned” attempts to classify Lokey as

a derivative work under the statute sections 101, 106(2) and S501, as

“frivolous” and accused petitioner of trying to radically alter

rationalize their ruling, which has so far departed from accepted

standards of judicial proceedings (by sanctioning such departures

by lower courts in Jason and See), as calls for an exercise of this

Court’s power of supervision. This case is “ripe” for an interpreta-

tion of the language of the new statute pertaining to derivative

rights violated without consent of the author and for a redefine-

ment of rules and policy, in accordance with the purposes of the

new Act.

In the last analysis, any story can conceivably be reshaped

and channeled to different narrative objectives, once given to a

gifted craftsman; but the extent of such reshaping should not

exonerate the unauthorized taking of an author’s work; and

whether this was actually done is an issue yet to be resolved.

(d) A Triable Issue of Fact.

The Court in Twentieth, supra, noted that if a triable issue

existed as to qualitative similarity of either ideas or expression, then

a grant of summary judgment would be improvident:

“[W]e conclude that the films do in fact raise genuine issues of

material facts as to whether on/y the [plaintiff's] idea or the

expression of that idea was copied. Sid & Marty Krofft

Television Prods., Inc. vs. McDonald’s Corp., 562 F.2d 1157

(9th Cir. 1977).” (Emphasis added.)

The Court went on to say that it was not deciding whether ideas

or expressions were actionably similar, only that reasonable minds

could differ on these factual issues. The Court so ruled on the basis

of similarities between the works, listed in footnote 5 of the opinion,

at page 1329.18

The instant case should be treated no less differently. A basic

assumption of both lower courts was that the high professional

standing of the persons involved somehow makes it impossible for

them to have done anything which amounts in law to infringement.

Second, that no similarity of idea, or expression, has much signifi-

cance if it is labeled an abstraction; and, further, that many

instances of suspicious, but inexplicable and unique similarities do

not have a cumulative effect.

(e) Copyright in American Property Law.

In recent years, copyright has become one of the most important

areas of American property law. Today, livelihoods are earned

predominantly through the sale of information, expertise and

personal services. There has been an explosion in technology. The

extent to which authors are protected in their exclusive property

rights is central to national growth. Congress has spoken. The term

“derivative work” is new to the statute and clearly defined. It is used

elsewhere in sections 203 and 304(c)-—strong evidence that ex-

cludes any meaning which is not stated. 2A Sands, Statutes and

Statutory Construction, §47.07 (Supp. 1978). Only where one of

the major purposes of the legislation would be defeated should a

Statutory definition be interpreted to mean other than what it says.

In Re: Trans Alaska Pipeline Rate Cases, 436 U.S. 631, at 643

(1978). Clearly, the majar purpose of the broad derivative work

definition serves the Congressional purpose of granting greater

protection to the author which is really the raison detre of the

entire Act.

The premise underlying the law giving the owner of a copyright

exclusive control over the right to prepare derivative works is based

on the assumption that a film is more than a mere reproduction of a

18The similarities included: Both stories revolved around a struggle

between democratic and totalitarian forces; in both works the hero’s father

was a past leader of the democratic force; the leader of the democratic

forces was an older, wiser man; an important planet is destroyed. The

heroine in each is imprisoned; a leading character returns to his fa:uily in

each, sequences alternate between the opposing forces, a romance exists

between a friend of the hero and the daughter of a leader, a friendly robot ts

hurt, spaceships look old and used, one scene in each incorporates aliens

playing music, climaxes similar.

novel, or short story, or a play. If the derived product is taken and

used without consent of the author, it is infringement of the

exclusive preparation right. It is different from the reproduction

right because a derivative work requires a “textual” change as was

explicitly recognized in the Copyright Law Revision Parts,

Preliminary Draft at 115. Thus, a work is derivative if it is

“textually” changed and “based upon” a pre-existing work or

works.'® When this is done without permission, it is an invasion of

the exclusive right to “prepare.” Whereas, under the old law, the

owner of the copyright had only the exclusive right to “print,

reprint, publish, copy and vend the copyrighted work,?° the owner

of the copyright under the new law was given the exclusive right to

“use” the work in preparation of derivative works. Thus invaluable

rights are preserved that went unprotected under the old Act.

Respondents suggest that to extend protection to a case like this Is

to extend it to ideas. This misses the point. If the only similarity

between Lokey and E.T. had been the story situation, or the basic

idea of an alien stranded on earth and befriended by children, then

certainly there could be no protection. But where, as here, one

author takes this situation and complicates it by starting at point A

and developing a plot or sequence of events around it to point Z,

then protection should obtain where the sequence of events is

“tracked” above and beyond the basic story situation. The direction

respondents could have iaken in their story situation is as varied as

the moves in a game of chess. Instead. they chose to knowingly

19Professor Nimmer, in his treatise on copyright law published more

than twenty years ago, confused inspiration with derivation. He stated that

“in a broad sense, almost all works are derivative.” His reasoning is faulty

under the new Act. If a derivative work is one which is based upon a prior

work or works and depends for its own existence on the prior work or

works and is the source of the new work and is recognized as such, then it ts

a derivative work. It would be patently absurd to say that Hemingway’s

writings are based upon Faulkner's writings. In no sense is a work

derivative uniess the ‘preparer’ is focusing on reshaping a ‘particular’ work

or works. Writers usually create out of life experiences, not on other works.

True creation is based on “experience, thought and reflection,” and to give

undiscriminating equal recognition to a re-creator (one who reshapes a

prior work with intent to do so) of another’s work, is to have little

understanding of the creative process. Unfortunately, the film industry has

been loathe to give intellectual and financial credit where ic is due,

especially to writers.

17 U.S.C. §1(a) (1964). There are other exclusive rights enumerated in

the old act, but none is as broad as the exclusive right to prepare derivative

works enumerated in the new Act.

overstep the infringement line at the risk of being discovered,

sought to destroy petitioner’s valuable rights in her own work, while

reaping the benefits of their chicanery.?!

Ill. Conclusion

There is no indication in the 1976 Copyright Act, or in its

legislative history, or in its predecessor legislation, or in any known

decisions which would promote snecial treatment solely because a

particular film is the most successfully commercial film of all time.

The copyright law of the United States derives from the Constitu-

tion, and must be administered nationwide in a uniform way as to

protect all artists and creators, particularly in this era of instant

global communication and dissemination, or it is a meaningiess

sham and a cruel deception. If an artist does not have the same

no real federal copyright protection. If an artist does not have the

same protection whether he is rich or poor, or famous or unknown,

then there is no justice at all—there is only the ‘business’ of the

courts. Thus, it is vital for this Court to render a modern decision,

that, for good cause, a writ of certiorari be issued to review the

judgment and opinion of the Ninth Circuit—so that all things

hidden shall be revealed—and that for this the petitioner ever

prays.

Respectfully submitted,

RALPH FRANCIS SERVER

LAWRENCE RUBEN BARBA

Attorneys for Petitioner

Lisa Litchfield

Annexed:

“A” Opinion of the Ninth Circuit—filed July 6, 1984

“B” Opinion of the Court Below—filed June 13, 1983

“C” Denial of Petition for Rehearing and Suggestion for

Rehearing En Banc— filed September 28, 1984

21Such deliberate attempts to avoid infringement is an old one in

Hollywood. It has been going on for years and explains the mediocrity of

most of today’s television programming. Deliberate attempts at literary

larceny without liability has probably done more to retard the progress of

the arts than anything else because prior to the new Act there was really no

deterrent to this kind of behavior. As a matter of fact, it has been

encouraged by the ‘movie courts’ in both New York and Hollywood.

APPENDIX

APPENDIX “A”

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

LISA LITCHFIELD,

Plaintiff-Appellant, No. 83-6045

VS.

STEVEN SPIELBERG: MCA INC.:

UNIVERSAL CITY STUDIOS, INC.;

EXTRA-TERRESTRIAL

PRODUCTIONS: KATHLEEN

KENNEDY: NED TANEN: and

MELISSA MATHISON,

OPINION

Defendants-Appellees.

Appeal from the United States District Court

for the Central District of California

District Judge Cynthia Holcomb Hail. Presiding

Argued and Submitted June 5, 1984

Before: WRIGHT, FERGUSON, and REINHARDT,

Circuit Judges. WRIGHT, Circuit Judge:

The issues: (1) Did the producers of the motion picture. F. 7. —

The Extra Terrestrial, infringe the copyright of a musical play.

Lokey from Maldemar, and (2) Was summary judgment proper

on the issue of substantial similarity?

Litchfield wrote and copyrighted Lokeyv from Maldemar.

Subsequently the defendants produced F. T.

Litchfield sued for copyright infringement, unfair competition,

and various state claims, alleging that F. 7. was copied from her

play. The district court granted defendants’ motion for summary

judgment on the copyright claim and dismissed the remaining

claims.

On appeal, the main question is whether summary judgment

was proper on the issue of substantial similarity. We hold that

it was.

DC No. 82-3867 CHH

FACTS:

The district judge's findings of fact of June 10.

case accurately:

Plainutl Lisa Litchfield is the author of a one-act play

entitled “Lokey from Maldemar.” Litchfield wrote the

play in 1978. and public performances were given in

los Angeles in September 1978. Subsequently. she

submitted a copy of “Lokey™ to defendant Universal

City Studios, Inc., in the hope that the work would be

purchased for purposes of developing a motion picture.

These aspirations were disappointed, however, when

Universal rejected “Lokev” as unsuitable for film

treatment in) October 1979. Nonetheless. plaintiff

continued her efforts to market the work, adapting a

“screenplay outline” of “Lokey™ in 1980 trom the 1978

theatrical version. Despite repeated efforts to find a

receptive buyer for her works. plaintiff failed to find

success in Hollywood.

As originally developed in 1978, “Lokey” was a musical

play about the adventures of two aliens. Fudinkle and

lLokey, who are temporarily stranded on Earth when

their spacecraft is immobilized by gravity. After landing

near the North Pole, the aliens mee: Lisa Marie, her

younger brother Michael, and their father, a scientist

stationed at the Sorenson Research Center at the North

Pole. After temporarily detaining the children with an

energy field. the aliens quickly learn English and are

invited home by Lisa Marie to meet her father. At the

cabin, Lokey demonstrates his extraordinary extra-

terrestrial powers by psychokinetically taking a gun

away trom her father: reviving the father from a heart

attack: projecting a map of the Earth on the cabin wall

through mind power: and revealing his own destiny as a

future ruler of his planet. Lisa Marie demonstrates her

own terrestrial charms, teaching Lokey to kiss and

inducing him to promise to send “mind pictures” to her

after the aliens’ departure. Fudinkle and Lokey then

1983 state the

Ars Bete Bera Ner oa.

ina Stal nee “Ae A TOE AI ond

ENA a

travel to a beach in Japan, where they capsize a fishing

boat filled with porpoise hunters. Next, the aliens travel

to the Andes Mountains, where they meet Tollie Marx,

a prophetic witch. Finally, all of the characters appear

on the edge of the Pacific Ocean, where the aliens bid

the humans farewell as they return to their ship.

On June 11, 1982, the defendants’ film “E.T.— The

Extraterrestrial” opened at commercial movie theaters.

“E.T.” is the story of a small alien accidentally left

behind when his fellow explorers are forced to hastily

leave Earth. E.T. is lured, by hunger and curiosity, into

the California suburban home of 10-year-old Elliot, his

brother and sister, and their mother. During the

following days, E.T. learns a few words of English;

discovers television, beer, and other appurtenances of

contemporary American life: and constructs a trans-

mitter to “phone home.” The children, in turn, learn that

E.T. possesses unearthly powers: E.T. levitates objects

through psychokinesis; heals a small cut with his

glowing finger: revives a wilted flower: and establishes a

psvcho-physical empathy with Elliot. Yet E.T.’s powers

are not total: as time passes, E.T. gradually deteriorates.

After an apparently unsuccessful attempt to contact his

people. E.T. is captured by the scientific investigators

who have stalked his existence since he was left behind

by his spaceship. Following his capture. E.T. appears to

have expired. but he revives when he senses that his

people are returning for him. A chase ensues, and the

film concludes with E.1. bidding farewell to earthling

friends and returning home.

Litchfield sued for copyright infringement, violation of the

Lanham Act. unfair competition. misrepresentation of story

authorship, breach of implied in fact contract and breach of

contidence. On February 9. 1983, the district court dismissed the

Lanham Act, state unfair competition and misrepresentation of

story authorship claims. Plaintiff appealed this interlocutory order,

but asked for and was granted voluntary dismissal in August, 1983.

On June 16, 1983. the district court granted summary judgment

to the defendant on the copyright infringement claim and dismissed

the pendent state claims. Plaintiff filed notice of appeal of the

summary judgment order on July 13, 1983.

A. SUBJECT MATTER JURISDICTION

Defendants question the court’s jurisdiction over the unfair

competition and misrepresentation of story authorship claims

because the July 13 notice of appeal did not name these claims.

A mistake in designating the judgment appealed from does not

cause the loss of the appeal as long as intent to appeal from a

specific judgment can be fairly inferred from the notice, and

appellee is not misled by the mistake. Munoz v. Small Business

Administration, 644 F.2d 1361, 1364 (9th Cir. 1981). An appeal

from a final judgment draws in question all earlier, non-final orders

and rulings which produced the judgment. /d. Here, the premature

appeal of the interlocutory order had been filed and served, and the

issues were fully briefed. Defendants have shown no prejudice

resulting from our review of these claims.

B. COPYRIGHT INFRINGEMENT

|. Elements

To prove copyright infringement, the plaintiff must show (1)

ownership of the copyright, (2) access to the copyrighted work, and

(3) substantial similarity between the copyrighted work and the

defendant's work. Sid & Marty Krofft Television Productions, Inc.

v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir. 1977). The

parties agree that plaintiff owns the copyright to Lokey. For the

purposes of the motion for summary judgment, defendants concede

they had access. The only issue is whether summary judgment was

proper as to substantial similarity.

Substantial similarity is usually an extremely close issue of fact

and summary judgment has been disfavored in cases involving

intellectual property. Twentieth Century-Fox Film C orporation v.

MCA, Inc., 715 F.2d 1327, 1330 n.6 (9th Cir. 1983). It is appro-

priate, however, if reasonable minds could not differ as to the

absence of substantial similarity in expression. See v. Durang,

711 F.2d 141, 143 (9th Cir. 1983).

We review the propriety of summary judgment de novo.

Twentieth Century-Fox. 715 F.2d at 1328. The evidence and

inferences must be viewed in the light most favorable to the

plaintiff. /d.

2. Comparison of E.T. and Lokey

Before considering a motion for summary judgment on the issue

of substantial similarity, the court must make a detailed compari-

son of the allegedly infringing and infringed works. To this end, the

district judge (1) read the 1978 and 1980 versions of Lokey, (2) read

the “continuity” script of E.7., and (3) viewed E.T. at defendants’

screening room.

Litchfield claims that it was prejudicial error to view E. T. outside

the presence of her counsel. She alleges that the version of E.T.-

shown may have differed in some material respects from the version

that is shown publicly.

There is no record that Litchfield objected formally to the

showing of E£.7., nor does it appear that she asked to review the

film. We will not review an issue not raised or objected to below

unless necessary to prevent manifest injustice. Komatsu, Lid. v.

States Steamship Co., 674 F.2d 806 (9th Cir. 1982).

Our de novo review of the issue of substantial similarity removes

any prejudice that might have resulted from this alleged error. We

need not consider it.

Our own, independent review of the works is based on readings

of (1) the two versions of Lokey, and (2) the continuity script of

E.T. We express no opinion whether reading a continuity script will

suffice to allow comparison of a motion picture with other works in

all cases. Cf. Dellar v. Samuel Goldwyn, Inc., 104 F.2d 661 (2d Cir.

1939). In this instance, comparison based on the continuity script is

‘permissible because neither party has claimed that the continuity

varies from the movie. See Jason v. Fonda, 698 F.2d 966 (9th Cir.

1982), incorporating by reference, 526 F.Supp. 774, 777 (C.D. Cal.

1981).

3. Summary Judgment on the Issue of Substantial Similarity

We may uphold summary judgment if no reasonable jury could

find substantial similarity between E. 7. and Lokey. See v. Durang,

711 F.2d at 143.

To prove infringement, a plaintiff must show that the works are

substantially similar in both ideas and expression. Sid & Marty

Krofft, 562 F.2d at 1164.

Similarity of ideas may be shown by an extrinsic test which

focuses on alleged similarities in the objective details of the works.

Id. The extrinsic test requires a comparison of plot, theme,

dialogue, mood, setting, pace and sequence. Jason v. Fonda, 698

F.2d 966 (9th Cir. 1982), incorporating by reference, 526 F. Supp.

774, 777 (C.D. Cal. 1981).

Similarity of expression depends on a subjective, intrinsic test.

This test focuses on the response of the “ordinary reasonable

person” to the works. Sid & Marty Krofft, 562 F.2d at 1164.

Litchfield relies on a list of similarities between Lokey and E.T.

to show the extrinsic similarity of the works. She argues that there

are too many similarities, especially in the sequence of events and

incidents leading to the climax, for the court to determine that there

is no material issue of fact.

While we have relied on such lists of similarities in the past for

“illustrative purposes.” Twentieth Century Fox, 715 F.2d at 1329

n.5, they are inherently subjective and unreliable. We are particu-

larly cautious where, as here, the list emphasizes random

similarities scattered throughout the works. See McMahon v.

Prentice Hall, Inc., 486 F. Supp. 1296, 1304 (E.D. Mo. 1980).

Viewed in the light most favorable to the plaintiffs, some

similarities in the opening scenes of Lokev and the movie FE. 7. may

be more than stock scenes. There is no substantial similarity,

however, between the sequences of events, mood, dialogue and

characters of the two works. Any similarities in plot exist only at

the general level for which plaintiff cannot claim copyright

protection. See Jason, 526 F. Supp. at 777.

There is even less similarity of expression. To constitute infringe-

ment of expression, the total concept and feel of the works must be

substantially similar. Sid & Marty Krofft, 562 F.2d at 1164. The

concept and feel of the works here are completely different.

Whereas FE. 7. concentrates on the development of the characters

and the relationship between a boy and an extraterrestrial, Loker

uses caricatures to develop its theme of mankind divided by fear

and hate. No lay observer would recognize F. 7. as a dramatization

or picturization of Lokeyv. See Bradbury v. Columbia Broadcasting

System, Inc., 287 F.2d 478, 484 (9th Cir. 1961): AKustoff v. Chaplin,

120 F.2d 551, 559 (9th Cir. 1941).

C. PRODUCTION OF A DERIVATIVE WORK

Litchfield argues that defendants violated section 106(2) of the

work based on Lokey. The district court did not address this issue.

Section 106(2) grants the exclusive rights to prepare a derivative

work to the holder of the copyright. 17 U.S.C. § 106(2). To

constitute a violation of section 106(2) the infringing work must

incorporate in some form a portion of the copyrighted werk. Notes

of the Committee on the Judiciary, House Report No. 94-1476,

reprinted in 17 U.S.C. § 106(2) (1982).

Litchfield argues that section 106(2) was intended to expand the

definition of derivative works to include any work based on a

copyrighted work. She argues that the similarities between her play

and the movie constitute the required “incorporation” and show

that E. 7. was based on Lokey for purposes of the statute. Litchfield

apparently believes that she does not have to show substantial

similarity to show that E.T. is a derivative work.

Litchfield cites no authority to support this novel proposition.

The little available authority suggests that a work is not derivative

unless it has been substantially copied from the prior work. See

Harry Fox Agency, Inc. v. Mills Music, Inc., 543 F. Supp. 844, 849

(S.D.N.Y. 1982), rev'd on other grounds, 720 F.2d 733 (2d Cir.

1983, cert. granted sub nom, Mills Music, Inc. v. Snyder, 104 S.Ct.

1676 (1984); Revher v. Children’s Television Workshop, 533 F.2d

87, 90 (2d Cir.), cert. denied, 429 U.S. 980 (1976): | M. Nimmer,

We have stated that “[a] work will be considered a derivative

work only if it would be considered an infringing work if the

material which it has derived from a prior work had been taken

without the consent of a copyright proprietor of such prior work.”

United States v. Taxe, 540 F.2d 961, 965 n.2 (9th Cir. 1976)

(emphasis added).

To prove infringement, one must show substantial similarity. See

v. Durang, 711 F.2d at 143, Krofft, 562 F.2d at 1172. Litchfield’s

arguments that section 106(2) radically altered the protection

afforded by the law of copyright are frivolous.

D. LANHAM ACT VIOLATION

The district court dismissed Litchfield’s allegations that de-

fendants violated section 43(a) of the Lanham Act, I5 U.S.C. §

1125(a). Dismissal for failure to state a claim is proper only when it

appears to a certainty that the plaintiff can prove no set of facts in

support of her claim that would entitle her to relief. Rae v. Union

Bank, 725 F.2d 478, 479 (9th Cir. 1984).

Section 43(a) makes a person liable for using a false description

of origin in connection with any goods and services put into

commerce. 15 U.S.C. § 1125(a). We have held that an actor may

state a claim for “reverse passing off” under the Act when a motion

picture is mislabeled to mask his contribution. Smith v. Montoro,

648 F.2d 602. 605-07 (9th Cir. 1981). Reverse passing off occurs

when a “wrongdoer removes the name or trademark on another

party's product and sells that product under a name chosen by the

wrongdoer.” /d. at 605.

Litchfield’s claim is meritiess, however, in light of our holding

that there is no substantial similarity between Lokeyv and E.T. See

Warner Brothers v. American Broadcasting Companies, 720 F.2d

231. 246 (2d Cir. 1983). We have not yet decided whether the reverse

passing off doctrine defined in Smith extends to cases of substantial

similarity or is limited to bodily appropriation. See Kramer

International, Inc. v. Russ Berrie & Co., 657 F.2d 1059, 1064 (9th

Cir. 1981). In either case, without substantial similarity there can be

no claim for reverse passing off under section 43(a). Warner

Brothers, 720 F.2d at 246-47.

E. STATE CLAIMS

The district court dismissed plaintiffs state claims for unfair

competition and misrepresentation. In so far as these state claims

are restatements of the copyright infringement claims, they are

preempted by federal copyright law. Mention v. Gesseil, 714 F.2d

87, 90 (9th Cir. 1983). Federal law preempts common law copyright

claims undertaken after January |, 1978. /d. Plaintiff did not allege

or offer to prove that the copying took place before January 1978.

The dismissal of the pendent state claims of breach of implied-in-

fact contract and breach of confidence was proper because all

federal claims were dismissed prior to trial. United Mine Workers v.

Gibbs, 383 U.S. 715, 726 (1966): Jason v. Fonda, 698 F.2d at 967.

CONCLUSION:

The summary judgment was proper because no reasonable jury

could conclude that Lokey and E.T. were substantially similar in

their ideas and expression. The district court properly dismissed the

other claims.

As is too often the case, Litchfield’s action was premised “partly

upon a wholly erroneous understanding of the extent of copyright

protection; and partly upon that obsessive conviction, so common

among authors and composers, that all similarities between their

works and any others which appear later must inevitably be

ascribed to plagarism.” Dellar v. Samuel Goldwyn, Inc., 150 F.2d

6212 (2d Cir. 1945).

AFFIRMED.

APPENDIX “B”

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

LISA LITCHFIELD,

Plaintiff,

VS.

STEVEN SPIELBERG; MCA INC., FINDINGS OF

a corporation: UNIVERSAL CITY FACT AND

STUDIOS, INC., a corporation: CONCLUSIONS

EXTRATERRESTRIAL OF LAW

PRODUCTIONS, a California

limited partnership; KATHLEEN

KENNEDY, NED TANEN, and

MELISSA MATHISON, individuals,

Defendants.

eee ee wee ie Oe ee

The Court makes the following Findings of Fact and Con-

clusions of Law, for purposes of this motion only, in support of the

Order granting summary judgment to defendants on the First,

Fourth, and Fifth Causes of Action.

FINDINGS OF FACT

Plaintiff Lisa Litchfield is the author of a one-act play entitled

“Lokey from Maldemar.” Litchfield wrote the play in 1978, and

public performances were given in Los Angeles in September 1978.

Subsequently, she submitted a copy of “Lokey” to defendant

Universal City Studios, Inc., in the hope that the work would be

purchased for purposes of developing a motion picture. These

aspirations were disappointed, however. when Universal rejected

“Lokey” as unsuitable for film treatment in October 1979. None-

theless, plaintiff continued her efforts to market the work, adapting

a “screenplay outline” of “Lokey” in 1980 from the 1978 theatrical

version. Despite repeated efforts to find a receptive buyer for her

works, plaintiff failed to find success in Hollywood.

No. CV 82-3867-CHH

Al0

As originally developed in 1978,“Lokey”™ was a musical play about

the adventures of two aliens, Fudinkle and Lokey, who are

temporarily stranded on Earth when their spacecraft is immobilized

by gravity. After landing near the North Pole, the aliens meet Lisa

Marie, her younger brother Michael, and their father, a scientist

stationed at the Sorenson Research Center at the North Pole. After

temporarily detaining the children with an energy field, the aliens

quickly learn English and are invited home by Lisa Marie to meete

her father. At the cabin, Lokey demonstrates his extraordinary

extra-terrestrial powers by psychokinetically taking a gun away from

the father; reviving the father from a heart attack; projecting a map

of the Earth on the cabin wall through mind power: and revealing his

own destiny as a future ruler of his planet. Lisa Marie demonstrates

her own terrestrial charms, teaching Lokey to kiss and inducing him -

to promise to send “mind pictures” to her after the aliens’ departure.

Fudinkle and Lokey then travel to a beach in Japan, where they

capsize a fishing boat filled with porpoise hunters. Next, the aliens

travel to the Andes Mountains, where they meet Tollie Marx, a

prophetic witch. Finally, all of the characters appear on the edge of

the Pacific Ocean, where the aliens bid the humans farewell as they

return to their ship.

On June I1, 1982, the defendants’ film “E.T. --The Extra-

terrestrial” opened at commercial movie theaters. “E.7T.” is the story

of a small alien accidentally left behind when his fellow explorers

are forced to hastily leave Earth. “E.T.” is lured, by hunger and

curiosity, into the California suburban home of 10-year-old Elliot.

his brother and sister, and their mother. During the following days.

E.T. learns a few words of English; discovers television, beer, and

other appurtenances of contemporary American life; and constructs

a transmitter to “phone home.” The children, in turn, learn that

E.T. possesses unearthly powers: E.T. levitates objects through

psychokinesis: heals a small cut with his glowing finger; revives a

wilted flower; and establishes a psycho-physical empathy with

Elliot. Yet E.T.’s powers are not total; as time passes, E.T.

gradually deteriorates. After an apparently unsuccessful attempt to

contact his people, E.T. is captured by the scientific investigators

who have stalked him since he was left behind by his spaceship.

Following his capture E.T. appears to have expired, but he revives

when he senses that his people are returning for him. A chase

ensues, and the film concludes with E.T. bidding farewell to

earthling friends and returning home.

CONCLUSIONS OF LAW

To establish copyright infringement, plaintiff must prove three

elements: (1) ownership of copyright: (2) access to the copyrighted

All

work; and (3) “substantial similarity” between the copyrighted work

and the defendants’ work. Sid & Marty Krofft Television Produc-

tions, Inc. v. McDonald’s Corp., 562 F.2d 1157, 1162 (9th Cir.

1977) (‘Krofft’). For purposes of this motion, defendants admit

of “Lokey from Maldemar™ and concede that they had access to

these works.!' The single issue presented on this motion concerns the

existence of “substantial similarity” between the works. ;-

Defendants are entitled to summary judgment if they demon-

strate that “there is no genuine issue as to any material tact and that

[they are] entitled to a judgment as a matter of law.” Fed. R. Civ. P.

56(c). In deciding a summary judgment motion, the Court must

closely examine the “inherently peculiar” facts presented by each

case, Twentieth Century-Fox Film Corp. v. MCA, Inc., 696 F.2d

689, 692 n.6 (9th Cir. 1983). If Rule 56 is to be of any effect,

summary judgment must be available to put “‘a swift end to

meritless litigation’ and to avoid lengthy and costly trials.”

Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 977 (2d

Cir.), cert. denied, 449 U.S. 841 (1980).

The determination of whether defendants’ work is substantially

similar to plaintiff's turns upon two tests: (1) an “extrinsic” test,

turning upon objective criteria such as the “subject matter” and

“setting for the subject”; and (2) an “intrinsic” test, based upon the

subjective “response of the ordinary reasonable person.” Krofft,

supra, 562 F.2d at 1164. The Krofft formulation is analogous to

the traditional “idea-expression” dichotomy set forth in previous

Corp., 274 F.2d 487, 489 (2d Cir. 1960). A comparison of plaintiff's

and defendants’ works reveals that there is no substantial similarity

under either the extrinsic or intrinsic tests.

In this case, the extrinsic characteristics of the works include the

plot, themes, dialogue, mood, setting, pace, and sequence. Jason v.

Fonda, 52% F. Supp. 774, 777 (C.D. Cal. 1981), aff'd, 698 F. 2d 966

(9th Cir. 1982). A close examination of these criteria reveals vast

differences between the two works. The plots are similar only ata

genera! level: aliens are stranded on earth, meet earthlings,

demonstrate “extra-terrestrial” pewers such as levitation and

telepathy, are pursued by authoritarian characters, and finally bid

their earthling friends farewell as they return to their homes.

Beyond these generalized similarities, for which piaintiff cannot

claim copyright protection, see Jason v. Funda, supra, the plots and

sequences of the works are dissimilar. These differences are

accentuated when themes, mood, and character development are

' Plaintiff does not allege, nor do defendants admit, that they ever viewed

or had access to the 1978 theatrical performances of “Lokey.”

Al2

considered. In her “Critique” of the screenplay version, plaintiff

describes her work as a “social satire” designed to illustrate the

“disunity of man so divided by egotism and all its manifestations

of fear and hate.” “E.T.”, does not purport to raise and resolve

diverse moral and ethical questions. nor does it purport to employ

the overt and complex symbolism found in plaintiff's work. Setting

and dialogue are similarly diverse, with no apparent similarity

between “E.T.” and either version of “Lokey.” The lack of similarity

between the works in this case is at least as great as in cases such as

Giangrasso v. CBS, 534 F. Supp. 472 (E.D.N.Y. 1982); Bevan v.

CBS, 329 F. Supp. 601 (S.D.N.Y. 1971); Columbia v. Embassy,

(C.D. Cal. 1982); and Miller v. CBS, 209 U.S.P.Q. (BNA) 502, 6

Media L. Rep. (BNA) 1859 (C.D. Cal. 1980).

There is also no basis for a claim that the character E.T. infringes

plaintiff's copyright. Neither Lokey nor Fudinkle was the focus of

“Lokey,” nor were they “distinctively delineated” as required to

warrant copyright protection. See, e.g., Walt Disney Productions

v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Warner Bros., Inc. v.

Film Ventures Intl, 403 F. Supp. 522 (C.D. Cal. 1975). Lokey was

described in the 1978 play as a bald, egg-headed, gray-green, five-

foot tall boy, and in the 1980 screenplay as a “tall, gray-hued skin,

hairless alien. ...” Fudinkle is described as a giant firefly in 1978, as

a three-foot talking bug with a flashing phosphorus tail in 1980.

None of these descriptions is complete or distinctive.

Even if the similarities between the ideas of “Lokey” and “E.T.”

were found to be sufficiently substantial to satisfy the extrinsic test,

plaintiff would still be required to satisfy the “intrinsic” test to

sustain her claim at trial. As defined in Kroff7, intrinsic similarity

is determined by the subjective response of an audience to the work,

rather than analytic dissection and comparison. Intrinsic similarity

does not require proof of exact repetition or reproduction; rather, it

may be shown if the defendants’ work captures the “total concept

and feel” of the plaintiff's composition. See Krofft, supra, 562 F.2d

at 1167. Defendants have, in this case, satisfied their burden of

demonstrating an absence of any similarities in the expression of

ideas in “Lokey” and “E.T.” No reasonable jury could conclude that

“E.T.” and “Lokey” are substantially similar under an intrinsic test.

See, e.g., Warner Bros., Inc. v. American Broadcasting Co., 530 F.

Supp. 1187 (S.D.N.Y. 1982).

Having decided that defendants are entitled to partial summary

judgment on the issue of copyright infringement between “Lokey”

and the “E.T.” movie, two further issues may be resolved. First,

plaintiff's first cause of action for copyright infringement alleges

infringement not only by the film version of “E.T.” but also by

re etn) e

Al3

defendants’ merchandising of derivitive products. Although de-

fendants have moved for summary judgment only on the claim

directed against the film, there does not appear to be any basis for

pursuing the derivitive claims once the film is held to be non-

infringing. Accordingly, defendants are entitled to summary

judgment on the first cause of action in its entirety. Second, the

Complaint also alleges two pendent claims for breach of implied-in-

fact contract and breach of confidence. Because the Court has

discretion to dismiss pendent state claims when the federal claim is

dismissed prior to trial, see Jason v. Fonda, supra, 698 F.2d at 967,

these pendent claims will be dismissed for lack of subject matter

jurisdiction. Fed. R. Civ. P. 12(h) (3).

Dated: June 10, 1983.

Cynthia Holcomb Hall

United States District Judge

(Original signed)

APPENDIX “C”

Al5

IN THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

LISA LITCHFIELD.

No. 83-6045

CV No. 82-3867 CHH

Plaintiff-Appellant,

VS.

STEVEN SPIELBERG, MCA INC...

UNIVERSAL CITY STUDIOS, iNC.:

EXTRA-TERRESTRIAL

PRODUCTIONS; KATHLEEN

KENNEDY: NED TANEN: and

MELISSA MATHISON,

ORDER

Defendants-Appellees.

me eee eee ee”

Before: WRIGHT. FERGUSON, and REINHARDT,

Circuit Judges.

The panel as constituted in the above case has voted to deny

the petition for rehearing. Judges Ferguson and Reinhardt have

voted to reject the suggestion for a rehearing en banc.

The full court has been advised of the suggestion for an en banc

hearing. and no judge of the court has requested a vote on it. Fed.

R. App. P. 35(b).

The petition for rehearing is denied and the suggestion for a

rehearing en banc is rejected.

PROOF OF SERVICE BY MAIL

State of California

SS.

County of Los Angeles

I, the undersigned, say: | am and was at all times herein mentioned,

a citizen of the United States and a resident of the County of

Los Angeles, over the age of eighteen (18) years and not a party to

the within action or proceeding; that my business address is 8306

Wilshire Boulevard, Beverly Hills, California 90211; that on

December 26, 1984, I served the within Petition for Writ of

Certiorari in said action or proceeding by depositing true copies

thereof, enclosed in a sealed envelope with postage thereon fully

prepaid, in the United States mail at Los Angeles, California,

addressed as follows:

Clerk, United States Supreme Court

| First Street, N.E.

Washington, D.C. 20543

(Original and 40 copies)

Louis P. Petrich

Youngman, Hungate & Leopold

2049 Century Park East, Suite 3110

Los Angeles, California 90067

(3 copies)

I declare under penalty of perjury that the foregoing is true and

correct. Executed on December 26, 1984, at Los Angeles,

California.

Sheri R. Masser

(Original signed)

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.