On February 20, 2014, ALJ Dee Lord issued the public version of Order No. 18 (dated February 6, 2014) granting Thunderbird Films, Inc., Mindset Television, Inc., and The Walt Disney Company’s (collectively, “Respondents’”) motion for summary determination of no copyright infringement.  The Order simultaneously denied Complainants’ motion to strike evidence related to the motion for summary determination in Certain TV Programs, Literary Works For TV Production and Episode Guides (Inv. No. 337-TA-886).

By way of background, the investigation is based on a complaint filed by E.T. Radcliffe, LLC and Emir Tiar (collectively, “Complainants”) alleging violation of Section 337 in the importation into the U.S. and sale of certain TV programs, literary works for TV production and related episode guides that infringe Complainants’ copyrighted works. The Complainants’ works relate to a television show called Student Teacher, in which a boy teaches students of his own age group.  The Complaint also alleges violations of Section 337 in the importation into the U.S., sale for importation, and sale after importation of certain TV programs, literary works for TV production and related episode guides by reason of unfair methods of competition and unfair acts, the threat or effect of which is to destroy or substantially injure an industry in the United States.  See our June 10, 2013 and July 12, 2013 posts for more details on the complaint and Notice of Investigation, respectively.

According to the Order, Respondents filed a motion for summary determination alleging that there were no genuine issues of material fact in dispute regarding copyright infringement, and that Respondents were therefore entitled to a determination of no copyright infringement.  Respondents made three arguments in support of their motion.  First, Respondents alleged that Complainants did not own the copyrights in Student Teacher, because Complainants (specifically, Mr. Tiar’s wife) failed to list these works among her assets during recent bankruptcy proceedings.  Therefore, it was alleged that copyright ownership in the works became community property (although it is undisputed that Complainant and his wife originally owned and registered the works).  Second, Respondents asserted that Complainants did not demonstrate any genuine issues of material fact with respect to substantial similarity between Student Teacher and the accused TV program (Mr. Young).  Therefore, Complainants did not provide inferential proof of copying , which is required absent evidence of direct copying.  Third, Respondents argued that Mr. Young was independently created, supported by a declaration and documentary evidence showing that the idea for Mr. Young was created in the early 2000s.

The Office of Unfair Import Investigations (the “Commission Investigative Staff” or “OUII”) filed a response in support of Respondents’ motion.   OUII identified numerous unprotectable elements of Student Teacher (such as stock school characters) and noted several differences between the two works in terms of characters and plot.  OUII noted that there were no material facts in dispute, and therefore the issue of copyright infringement was ripe for summary determination. However, OUII argued that the ownership issue involved disputed issues of material fact.

Complainants opposed the motion, alleging that genuine issues of material fact existed for all issues raised by Respondents.  Specifically, Complainants asserted Mr. Tiar’s wife’s bankruptcy was irrelevant as she was never the owner of the copyrights, that the Complainants’ and Respondents’ TV programs were virtually identical, and that the only evidence of independent creation was abstract and generic.  Complainants also filed a motion to strike the exhibits provided as evidence of Respondents’ independent creation defense, alleging that the hard drive from which the evidence was obtained was corrupted.  Consequently, Respondents should not have been able to rely on this evidence.

Complainants’ motion to strike was separately opposed by Respondents and OUII.

ALJ Lord began her analysis by providing a detailed summary of copyright law.  The ALJ also enumerated the detailed evidence provided by Respondents supporting their defense of independent creation.  This was noted in contrast to Complainants, who “provide[d] not a single affidavit or declaration made on personal knowledge to support these arguments” and “present no more than mere allegations.”  Although noting that all evidence must be viewed in the light most favorable to the party opposing the motion, ALJ Lord determined that Complainants were unable to establish a genuine issue of fact for trial on the issue of independent creation.  Complainants instead chose to rely on their motion to strike in order to counter the detailed evidence provided by Respondents.  However, the ALJ considered that granting the motion to strike “would effectively deprive Respondents of their defense of independent creation.”  ALJ Lord agreed with Respondents  that Complainants’ motion to strike was procedurally improper on numerous grounds.  For these reasons, ALJ Lord denied the motion.  For example, no certificate of service was filed, and Complainants never refiled the motion.  Additionally, the Complainants’ motion to strike was found to be an improper method of enforcing discovery obligations against a third party, rather than following the Commission’s rules.

ALJ Lord also provided detailed substantive reasons for denying Complainants’ motion to strike.  For example, Complainants’ allegations that Respondents’ evidence contained on the hard drive was changed or destroyed were purely speculative.  Moreover, other witnesses were able to confirm the authenticity of key documents.   As such, Respondents’ evidence of independent creation was held to be unrebutted.  ALJ Lord then went on to consider the elements of Complainants’ works that were independently created by Respondents before they allegedly gained access to Student Teacher.  ALJ Lord found that seven elements of Respondents’ work were independently created before Respondents obtained access to Student Teacher, and thus were not copied from Complainants’ works, including: a male student becoming a teacher of students of his own age, and a Vietnamese janitor with martial arts superpowers who helps the protagonist.  As such, these elements were “filtered out before a comparison [was] made between Mr. Young and Student Teacher.”  ALJ Lord determined that “there is not enough similarity between the two works to create a genuine issue of material fact on substantial similarity.”

Therefore, as a matter of law, ALJ Lord determined that Respondents’ work, Mr. Young,  did not infringe Complainants’ copyright in Student Teacher.  ALJ Lord also held that Complainants were required to show cause why their remaining allegations should not be dismissed in light of the factual findings made in this Order.