USDC S.D. New York, March 29, 2011
- In copyright infringement action, court grants defendants’ motion to dismiss, concluding that no reasonable jury could find that defendants’ musical is substantially similar to plaintiff’s film, and that plaintiff’s contract claim is preempted.
Plaintiff Canal+ Image UK Ltd. (“Canal+”) owns the copyright to the film Kind Hearts and Coronets (the “Film”), a comic adaptation of Roy Horniman’s 1907 novel Israel Rank. Defendants Steven Lutvak and Robert Friedman entered into an agreement with Canal+ to adapt the Film into a musical play (the “Musical”). After Canal+ decided not to produce the Musical, the writers learned that Kind Hearts was based on Israel Rank, and that Israel Rank had passed into the public domain. Defendants revised their play to maintain the plot of the novel (written in the form of the prison memoirs of a man condemned to death), and eliminate elements unique to the Film. They did, however, retain the Film’s dramatic device of using a single actor – Sir Alec Guinness in the Film – to portray each of the novel’s eight murder victims. Canal+ sued, claiming that the Musical infringed its copyright in Kind Hearts and violated the parties’ contract. Among other things, Canal+ argued that the Musical “retained the central and most memorable expressive part of Kind Hearts and Coronets: the comedy inherent in having all eight of the aristocratic murder victims played by a single actor . . . .”
Defendants moved to dismiss the complaint on the ground that Canal+ failed to state a claim for copyright infringement and the further ground that the Copyright Act preempts Canal+’s claim for breach of contract.
The court began by identifying the protectible elements of the Film. It noted that in the case of a derivative work based on an underlying work in the public domain, only the material added to the underlying work is protected by copyright.
The court analyzed the Film’s characters, plot, theme and setting, and found that very little of those elements were protectible. It then turned to the dramatic device of using one actor to play multiple roles in the same production. It characterized this device as a “standard convention.” Finding it no more original than using a character who talks directly to an audience, the court found that it was not protectible.
The court then applied the “more discerning observer test” (which compares the protectible elements in the plaintiff’s work to defendant’s work) and the “total concept and feel test” (which compares the two works more broadly) to the Film and the Musical.
After noting that the Film contained very few original elements, the court held that there was no substantial similarity between the protectible aspects of the characters in or plot of the Film and the characters in or plot of the Musical. Indeed, the court emphasized that the plot of the Musical differs from the plot of the Film in several ways. For instance, in the Film the protagonist learns from his mother at a very young age that he has been disinherited and grows up with resentment. In the Musical, by contrast, the protagonist only learns of his disinheritance after his mother’s death. In sum, the court found that “most of the plot of the Musical that was similar to the plot of the Film is not original to the Film and nearly all of the plot that is similar to the film is not similar to the plot of the Musical.”
In addition to the comparison of the individual elements of the film, the court also considered whether there is a substantial similarity between the “total concept and feel” of the two works. Canal+ contended that the composite victim is “bound together in an inseparable unity with all of the Film’s other elements” and “is interwoven throughout the elaborate plot, moving the audience to laughter each time another foppish victim falls.” Canal+ argued that, as a result, the composite victim is responsible for creating the total concept and feel of the film. The court disagreed, observing that the total concept and feel of the film is a dark comedy/drama about a distinguished heir who murders his relatives in order to advance in rank. In comparison to the Film, the court noted that the Musical is a bawdy, over-the-top send-up of the same unprotectible plot. Although the court acknowledged that both works employ the convention of using a single actor to play all the victims, it concluded that that device was hardly the “heart and soul” of each work. Accordingly, the court dismissed Canal+'s copyright claim on the grounds that no reasonable jury would find that the film and musical are substantially similar in total concept and feel.
The court also held that Canal+'s breach of contract claim was preempted by the Copyright Act.