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8/2/2019 Response to Disney's MTD
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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
RAY K. HARTER, JR., et al.,
Plaintiffs,
v.
DISNEY ENTERPRISES, INC.,
Et al.Defendants.
)
))
)
))
)
))
Case No. 4:11-cv-02207-CDP
PLAINTIFFS JOINT RESPONSE IN OPPOSITION TO MOTION OF DEFENDANTS
DISNEY ENTERPRISES, INC., BUENA VISTA HOME ENTERTAINMENT, INC., KEY
PIX PRODUCTIONS, INC., ROBERT VINCE AND ANNA MCROBERTS TO DISMISSCOUNTS 1 AND 4 OF PLAINTIFFS COMPLAINT
De gustibus et coloribus non est disputandum
(There is no arguing about tastes and colors.)
COMES NOW Plaintiffs Ray K. Harter, Jr., Richard Kearney and Ed Corno, by and
through their undersigned counsel, and for their Joint Response in Opposition to Motion of
Defendants Disney Enterprises, Inc., Buena Vista Home Entertainment, Inc., Key Pix
Productions, Inc., Robert Vince and Anna McRoberts (Movie Defendants) to Dismiss Counts
1 and 4 of Plaintiffs Complaint (Motion), state as follows:
Plaintiffs respectfully request this Honorable Court deny Defendants Motion and permit
Plaintiffs to proceed conducting meaningful discovery of Defendants in pursuit of their claims.
Defendants motion pictures Santa Buddies: The Legend of Santa Paws and The Search for
SantaPaws and the screenplays upon which they are based (collectively, Motion Pictures), are
substantially similar to the protected expression in Plaintiffs illustrated Childrens workSanta
Paws The Story of Santas Dog(Storybook), such that it is Plaintiffs collective belief that
Movie Defendants actually copied their work in creating their Motion Pictures.
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In addition to the argument which follows, Plaintiffs incorporate herein by reference their
contemporaneously filed Response to Defendants Request for Judicial Notice of Plaintiffs and
Defendants Works.
ARGUMENT
While not supportive of the proposition in the case at bar, Plaintiffs admire the Movie
Defendants Motions commitment to efficient dispute resolution. Plaintiffs, too, would like this
matter resolved in their favor within weeks of the filing of the Complaint. However, as more
fully explained below, Defendants Motion is misguided. There is much discovery to be done in
connection with this litigation before this matter will be ripe for adjudication, much less
disposition.
Plaintiffs cause is comprised of a four count Complaint alleging copyright infringement
against all Defendants, breach of fiduciary duty and negligence against Defendant WME and a
civil conspiracy amongst all Defendants. Movie Defendants Motion only addresses Counts 1
and 4 as against Movie Defendants. Movie Defendants Motion is substantive in nature. That is,
Movie Defendants have not asserted Plaintiffs have failed to properly plead their causes of
action. In fact, Movie Defendants concede, for purposes of their Motion, the first element
Plaintiffs must prove in order to prevail on their action for copyright infringement.
Movie Defendants, instead, argue that the Court should make its own comparison of the
Plaintiffs Storybookagainst the Motion Pictures and, on the strength of same, dismiss counts 1
and 4 of the Complaint with prejudice and without leave to amend. In support of this request,
Defendants boldly assert Plaintiffs misapprehend the nature of federal copyright law. To the
contrary, it is evident that all parties understand the nature of copyright law, however, there is a
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fundamental disagreement between the parties concerning whether Movie Defendants have
violated Plaintiffs rights.
I. LEGAL STANDARD FOR COPYRIGHT INFRINGEMENTMovie Defendants correctly set forth the elements requisite for a finding of copyright
infringement. A plaintiff must prove (1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original. Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S.340, 361 (1991). For purposes of this Motion, Movie Defendants concede that
Plaintiffs own a valid copyright to Storybook and that Movie Defendants had access to the work.
See Motion at 8. See also Exhibit E to Plaintiffs Complaint evidencing the memorialization by
co-Defendant WME of Movie Defendant Disneys interest in Plaintiffs story.
Accordingly, the lone element Plaintiffs must properly plead to survive a Motion to
Dismiss is copying of constituent elements of the work that are original. Plaintiffs have pled
and indeed believe Movie Defendants have actually copied Storybook. This remains in factual
dispute. Further, Defendants appear to concede this is a potential factual dispute in Motion.
SeeMotion at 8. To counter, Movie Defendants assert, [w]here, as here, the lack of similarity
between the parties respective works is obvious, judgment as a matter of law is appropriate
notwithstanding the presence of potential factual disputes concerning whether there was actual
copying, such as whether defendants had access to the plaintiffs work. Confusingly, this
phrase is followed (after an additional sentence) by a citation toNelsonv. PRN Productions, Inc.,
et al., 873 F.2d 1141, 1143 (8th
Cir. 1989).
Plaintiffs have reviewed this case in great detail insomuch as it is the only 8 th Circuit case
supporting the Movie Defendants proposition that the Court may, pursuant to a Motion to
Dismiss, dismiss the Complaint if the Court believes there is a lack of substantial similarity
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between the subject works. Plaintiffs are not able to locate any language inNelson which states
that where the lack of similarity between works is obvious that the court can disregard the
presence of factual disputes concerning whether there was actual copying.
Defendants appear to then rely upon venerable commentator Melville B. Nimmers
Treatise on the matter of copying. While not a source of primary authority, Plaintiffs are quite
aware of the influence of this treatise in copyright matters. Nimmer makes clear that there must
be a showing of more than actual copying to satisfy the copying element of infringement.
Specifically, and quoting the language ofFeist, the portions copied must be of constituent
elements of the work that are original. 4 Nimmer, 13.01[B]. In short, the relevance of
whether Movie Defendants actually copied Plaintiffs Storybook is dependent upon whether the
portions copied were themselves original.
II. PLAINTIFFS HAVE MET THE APPLICABLE PLEADINGREQUIREMENTS AND HAVE STATED A CAUSE OF ACTION FOR
COPYRIGHT INFRINGEMENT.
a. Pleading Requirements Generally Applicable to Federal LitigationMovie Defendants first cite the ubiquitous pleading requirements stated in Twombly and
subsequent 8th Circuit precedent establishing the applicable pleading requirements and
permitting the Court to dismiss a Complaint where amendment would be futile. The Plaintiffs
are in agreement with Movie Defendants with respect to these fundamental pleading issues.
However, the citation to Twombly and its progeny is somewhat gratuitous inasmuch as Movie
Defendants objection to Plaintiffs Complaint is not Plaintiffs failure to plead facts establishing
the enumerated causes of action so much as it is Defendantsdisagreement with Plaintiffs
characterization of the legal significance and sufficiency of the facts pled.
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b. Standard for Dismissal to Copyright Infringement Actions Applied inNelson isInapplicable to Plaintiffs Action Because it is Distinguishable from Extreme Facts in
Nelson.
In an extended citation, Movie Defendants citeNelson v. PRN Prods., 873 F.2d 1141,
1143-44 (8thCir. 1989) to support the proposition that a trial court should dismiss a copyright
claim pursuant to Rule 12(b)(6) where either the evidence demonstrates that no reasonable jury
could find the defendants works are substantially similar to the plaintiffs works, or the court
determines that any such similarities pertain only to unprotected elements in the works.
The factual circumstances at issue inNelson vary greatly and significantly from those at
issue here. Plaintiffs would ask this Court to distinguishNelson from the facts at bar. Nelson
was a dispute between siblings regarding the origins of song lyrics. Plaintiff inNelson was the
half-sister to international pop recording star Prince Rogers Nelson, who records under the
moniker Prince. She asserted that Princes international hit song U Got the Look was an
infringement of her copyrighted work Whats Cooking in This Book. The infringement
analysis in that litigation appears to have been restricted to a very limited comparison of a short
segment of the song lyrics contained in the two subject songs. SeeNelson, 873 F.2d 1141
1144. That is, the only items to be compared by the court were the relatively brief words on the
page. Indeed, the Court was certain to point out that the works to be compared were 35 lines and
176 words arranged into six verses in the case of the Plaintiffs work and 47 lines with 242
words arranged into eight verses in the case of Princes work. Within those briefworks, there
were only a few lines of text alleged to constitute the infringement. Id. at 11421143.
The facts ofNelson make it the exception rather than the rule and it should be
distinguished as such. Interestingly, the 1989 decision inNelson is the only example of which
Plaintiffs are aware of an 8th Circuit Court dismissing a copyright infringement action upon a
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finding of a lack of substantial similarity prior to discovery and pursuant to a Motion to Dismiss
(versus a Motion for Summary Judgment). Here, and as noted in Plaintiffs Joint Response to
Movie Defendants Request for Judicial Notice, there has not been any discovery conducted and
Plaintiffs have not had sufficient time to permit Plaintiffs to review or seek evaluation (expert or
otherwise) of the screenplays which they believe infringe on their copyrighted work by virtue of
the fact Plaintiffs have only recently received same.
Ultimately, though, this Court will be required to engage in an analysis comparable to
that which it completed just a few months ago in the matter ofReliant Care Management
Company, Inc., et al. v. Health Systems, Inc., et al., 2011 U.S.Dist. LEXIS 104579 (Sept. 15,
2011, E.D.Mo) when it denied the defendants Motion for Summary Judgment on the basis that
genuine issues of material fact remain as to whether the two works at issue were substantially
similar in idea and expression.
c. The 8th Circuit Test for Substantial Similarity.The 8th Circuit, and this Court in particular, have adopted and developed a two-step test
for analyzing substantial similarity. This court, citingHarman v. Hallmark Cards, Inc., 833 F.2d
117 (8th Cir. 1987), held inReliant Care that:
There must be substantial similarity not only in the general ideas but of theexpressions of those ideas as well. First, similarity of ideas is analyzed
extrinsically, focusing on objective similarities in the details of the works.
Second, if there is substantial similarity in ideas, similarity of expression isevaluated using an intrinsic test depending on the response of the ordinary,
reasonable person to the forms of expression. Reliant Care Management
Company, Inc., 2011 U.S. Dis. LEXIS 104579, citingHartman, 833 F.2d at 120
(internal quotation marks and citations omitted).
When applying the extrinsic test, the focus is on the objective characteristics of the two works,
including the type of work involved, the setting for the subject, and the materials used. Reliant
Care Management Company, Inc., 2011 U.S. Dis. LEXIS 104579, citingRottlund Co. v.
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Pinnacle Corp., 452 F.3d 726, 731 (8th
Cir. 2006). If the ideas are substantially similar under the
extrinsic test, similarity of expression is then evaluated using an intrinsic test depending on the
response of the ordinary, reasonable person to the forms of expression. Reliant Care
Management Company, Inc., 2011 U.S. Dis. LEXIS 104579, citingHartman, 833 F.2d at 120.
In applying the extrinsic test, this Court considers the works similarity of ideas, focusing on
objective similarities in the details of the works. Id. Importantly, expert opinions may, and
perhaps should, be considered at this stage. Reliant Care Management Company, Inc., 2011
U.S. Dis. LEXIS 104579, citing to, e.g.,Rottlund Co., 452 F.3d at 731.
The second step of the test for substantial similarity is the intrinsic test. This test
focuses on the similarity of expression in the works. Id. Similarity of expression is evaluated
using an intrinsic test depending on the response of the ordinary, reasonable person to the forms
of expression. Reliant Care Management Company, Inc., 2011 U.S. Dis. LEXIS 104579, citing
Hartman, 833 F.2d at 120. Infringement of expression occurs when the total concept and feel of
the works are substantially similar. Id.
Regarding analysis of the response of the ordinary, reasonable person, Plaintiffs refer this
Court to section e hereinbelow.
d. The 9thCircuits Modified Substantial Similarity TestCuriously, Movie Defendants subsequently dedicate approximately a page and a half of
their Motion to explication of the 9thCircuits modified extrinsic test for cases comparing
dramatic or literary works. The 9th
Circuits version of the extrinsic test, which formerly
compared similarity of ideas, now compares similarity of ideas and expression. As a rationale
for this shift, Movie Defendants point to Shaw v. Lindheim, 919 F.2d 1353 (9th
Cir. 1990), a case
in which Movie Defendants counsel represented defendant, which held that because the
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extrinsic test encompasses virtually every element that may be considered concrete in a literary
work, the extrinsic test is no longer simply a comparison of similarity of ideas and, therefore, the
intrinsic and extrinsic tests are more sensibly described as objective and subjective analyses of
expression, rather than distinct evaluations of ideas and expression of ideas. Id. at 1357.
It is unclear why Movie Defendants include this discussion in their Motion since they do
not request or suggest the 8th
Circuit adopt this modification. In fact, they opine that adopting
the 9thCircuits test would not likely impact the Courts decision because the two Circuits
probably reach the same results. See Motion at 12. Nonetheless, to the extent the Court elects
to adopt the modified extrinsic test, the Plaintiffs respectfully request the Court provide Plaintiffs
with an opportunity to supplement this brief to account for such modification.
e. The 8th Circuit Should Consider the Target Audience of the Subject Works inApplying the Ordinary, Reasonable Person Standard.
Unlike Movie Defendants, Plaintiffs are explicitly requesting that this Court seize this
opportunity to modernize Copyright Law in the 8th
Circuit. The legal fiction of the reasonable
man is, in the nomenclature of the holiday season, the weighty fruit cake of the common law.
That is, it gets passed around from person to person, but no one really knows what it is. It is
respectfully suggested that the time has arrived for the 8th
Circuit to follow the lead of the 6th
Circuit and toss it when it is unwanted, rather than passing it down the line.
The literature of cognitive bias is in and it is compelling. The academic literature is
mounting. See e.g. Lemley, Mark A., Our Bizarre System for Proving Copyright Infringement
(August 18, 2010). Stanford Public Law Working Paper No. 1661434. Available at SSRN:
http://ssrn.com/abstract=1661434 orhttp://dx.doi.org/10.2139/ssrn.1661434 . The Court should
take notice and consider that the ordinary observer is the likely customer of the copyrighted
product and that such a person may not be a member of the jury. In this case, the customers of
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the subject works are children and their caretakers. Obviously, absent a draconian change in
recognized juror qualifications, there will be no children empaneled to serve as triers of fact
herein.
The concept of the actual audience as ordinary observer has previously been considered
and applied by the 8th
Circuits peers. For example, the 4th
Circuit held the following inDawson
v. Hinshaw Music, Inc.:
We direct our attention to the district court's characterization of the ordinary
observer test as an ordinary lay observer test. We are well aware of the existence
of that characterization in the case law. However, as demonstrated below,
obedience to the undisputed principles of copyright law and the policy underlying
the ordinary observer test requires a recognition of the limits of the ordinary layobserver characterization of the ordinary observer test. Those principles require
orientation of the ordinary observer test to the works' intended audience,permitting an ordinary lay observer characterization of the test only where the lay
public fairly represents the works' intended audience.Dawson v. Hinshaw Music,Inc., 905 F.2d 731, 733 (4th Cir. N.C. 1990).
Given the Movie Defendants apparent preference for the 9th Circuit, the Court may wish
to note the 9th
Circuit appears to have applied this reasoning inData East USA, Inc. v. Epyx, Inc.,
when it said:
The lower court erred by not limiting the scope of Data East's copyrightprotection to the author's contribution -- the scoreboard and background scenes. In
actuality, however, the backgrounds are quite dissimilar and the method of
scorekeeping, though similar, is inconsequential. Based upon these two features, adiscerning 17.5 year-old boy [n6] could not regard the works as substantially
similar. Accordingly, Data East's copyright was not infringed on this basis either.
[n6 ]The district court found that the average age of individuals purchasing "Crate
Champ" is 17.5 years, that the purchasers are predominantly male, and comprise a
knowledgeable, critical, and discerning group.
Because we reverse in its entirety the district court's finding of copyright
infringement, it follows that the injunction was improvidently granted.
Accordingly, we remand to the district court to lift the injunction.Data East USA,
Inc. v. Epyx, Inc., 862 F.2d 204, 209-210 (9th Cir. Cal. 1988)
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Given the above, the Plaintiffs respectfully request this Court conduct the intrinsic
portion of its analysis with a subjective component considering the observational and cognitive
abilities and limitations of children while consuming the subject works.
It is further respectfully requested that this Court permit the Plaintiffs, at their election, to
present this Court with expert testimony concerning the cognitive and observational capabilities
of children as extraordinary observers. The 6th
Circuit has been willing to take this step in
unusual copyright cases. For example, the 6th Circuit held as follows in Kohus v. Mariol:
The ordinary observer test is based on the economic incentive view of copyright
law, that the "purpose of the copyright laws [is to] provide creators with a
financial incentive to create for the ultimate benefit of the public."Dawson v.Hinshaw Music, Inc., 905 F.2d 731, 733 (4th Cir. 1990). The test was designed
for cases where the lay audience purchases the product at issue, and where the layaudience's untutored judgment determines whether the product will sell. See
Arnstein, 154 F.2d at 473.
In cases where the target audience possesses specialized expertise, however, the
specialist's perception of similarity may be much different from the lay
observer's, and it is appropriate in such cases to consider similarity from the
specialist's perspective. The larger principle here is that the inquiry in the secondprong of the substantial similarity test should focus on the intended audience. This
will ordinarily be the lay public, in which case the finder of fact's judgment
should be from the perspective of the lay observer or, asMonogram Models put it,
the ordinary reasonable person. But in cases where the audience for the workpossesses specialized expertise that is relevant to the purchasing decision and
lacking in the lay observer, the trier of fact should make the substantial similarity
determination from the perspective of the intended audience. Expert testimonywill usually be necessary to educate the trier of fact in those elements for which
the specialist will look. SeeDawson, 905 F.2d at 736 ("Such an inquiry [into the
viewpoint of an observer with specialized expertise] may include, and no doubt inmany cases will require, admission of testimony from members of the intended
audience or, possibly, from those who possess expertise with reference to the
tastes and perceptions of the intended audience."); see also Computer Assocs.Int'l, Inc. v. Altai, Inc., 982 F.2d 693, 713 (2d Cir. 1992) (some citations omitted).
Kohus v. Mariol, 328 F.3d 848, 856-857 (6th Cir. Ohio 2003).
Naturally, here the intended audience does not possess specialized expertise. Indeed, the
absence of this expertise may, of itself, be specialized. In short, the intended audience lacks (or
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perhaps transcends) the powers of observation and cognition of a lay adult observer. It is for this
reason that the trier of fact may be assisted by expert testimony concerning the powers of young
children to perceive and interpret. Not since George Seatons 1947 Christmas filmMiracle on
34th
Street, has a court been called upon to address the integrity of the holiday spirit employing
the eyes of the beholder.
Should the Court so desire, Plaintiffs would be more than willing to brief this issue
further for this Court.
III. DEFENDANTS MOTION PICTURES ARE SUBSTANTIALLY SIMILARTO PLAINTIFFS STORYBOOK AND, ACCORDINGLY, PLAINTIFFS
COPYRIGHT CLAIM SHOULD NOT BE DISMISSED.
As a prelude to Plaintiffs discussion of substantial similarity between Storybook and
Movie Defendants Motion Pictures, Plaintiffs counsel is compelled to concisely relate events in
introductory undergraduate film class. As part of his introduction to the course, the professor
exhibited a scene from a well-known film adaptation and then asked classroom volunteers to
share their reactions to the clip. Predictably, the first volunteer commented on the significance
of the dialogue in the context of the narrative being advanced in the film. The professor then, as
he had likely done countless times, made the point that English majors have the most difficulty
in his class because they are so confined to the language of literature that they struggle adopting
and adapting to the language of film. That is to say, they get caught up in the familiar linguistic
elements of a narrative. However, there is more to cinematic and cinematographic
communication (and their allied counterparts, interpretation and understanding) than is conveyed
in simply viewing words on a page. When dealing with film, particularly in the context of an
adaptation of a written work, there are aural, visual, temporal and spatial dimensions that
necessitate a reconsideration of the expressive qualities and tools to be utilized by the filmmaker.
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Similarly, there is a constriction of thought one experiences viewing film that does not occur
when a reader of literature is left to her own imagination. It is in this context that it is humbly
and with the punctilio of respect suggested the Court exercise caution when embarking upon an
analysis of the similarities between Storybook and Motion Pictures.
The Court recalls that the current 8th
Circuit cases hold that expert opinions are properly
introduced for application of the extrinsic test. Movie Defendants cite 9th
Circuit precedent to
support the proposition that the Court may disregard expert testimony when they do not comport
with the works. Plaintiffs have not located any 8th
Circuit case law on the issue. Unfortunately,
at this early stage of the litigation and having just received what are purported to be the
screenplays which guided filming of the motion pictures, Plaintiffs have not been able to retain
experts for the Court to even consider disregarding. This is particularly problematic when the
Court considers that the materials to be compared are more complex than those the Court felt
comfortable enough to compare at the Motion to Dismiss stage in Nelson. Plaintiffs believe it
may prove useful to present expert testimony to the Court for consideration in connection with
the extrinsic test.
Specifically, the infringement alleged by Plaintiffs spans multiple works and is
multimedia in nature. That is, the Court is not comparing a few words in a popular song to a few
words in an unpopular song as the court did inNelson. The Court is comparing the brief
Storybook to the derivative works created by Movie Defendants in the form of two feature-
length screenplays and two feature-length films attendant with all of the multimedia translations
and production-related realities that necessarily must be taken into account.
Movie Defendants have gone to great lengths in their Motion to explicate myriad
differences between the Plaintiffs Storybook and Motion Pictures. The presence of differences
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(or mischaracterization of similarities), however, is not a dispositive inquiry any more than mere
identification of similarities is dispositive. Indeed, were that the case, there could be no action
for infringement for any feature length film adapted from a short story. Where a lengthy work is
derived from a brief predecessor, there will necessarily be significant differences. That does not
operate as a bar to a finding of infringement where there are substantial similarities in addition to
the many differences.
Movie Defendants have also expended significant effort characterizing the works at issue
in this litigation. See Appendix to Motion. Plaintiffs obviously do not concur with Movie
Defendants editorial judgment in describing the works. More importantly, the resolution of the
Motion and this litigation is found in the works themselves. Accordingly, Plaintiffs will
highlight for the Court the similarities in the ideas and expression of Storybook and Motion
Pictures to satisfy the substantial similarity test knowing any decision on Motion will ultimately
be predicated upon the Courts characterization of the subject works.
a. Plaintiffs Storybook passes the extrinsic test.Movie Defendants appear to confine Motions discussion of substantial similarity to the
intrinsic test. Accordingly, it appears that Movie Defendants, for purposes of Motion, are
conceding that Storybook passes the extrinsic test. Movie Defendants, in setting forth the factors
to be considered in applying the extrinsic test, again cite 9th
Circuit precedent which mandates
comparing the original expression of the works in the objective elements of plot, characters,
theme, sequences of events, setting, dialogue, pace and tone (or mood). (italics added) See
Motion at 10. As noted above, this citation is a 2006 reference to the modified extrinsic test,
which the 8th
Circuit has not adopted. Accordingly, Plaintiffs would not have the Court compare
expression in the extrinsic portion of the analysis.
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The standard in the 8th
Circuits extrinsic test requires focusing on objective similarities
in the details of the worksHartman, 833 F.2d 117, 120 (8th Cir. 1987). This Court added some
guidance when it wrote, [w]hen applying the extrinsic test, the focus is on the objective
characteristics of the two works, including the type of work involved, the setting for the subject,
and the materials used. ReliantCare Management Company, Inc., et al., supra, citingRottlund
Co., 452 F.3d at 731.
Here, there can be no question that Plaintiffs Storybook is objectively similar to Motion
Pictures. Plaintiffs will review the similarities in the ideas of the works starting at the highest of
levels and then get more specific. Examining the works from a birds eye view, or a view from
Santa Claus airborne sleigh (as the case may be), one cannot help but notice that all are dramatic
works in the childrens story genre. Each are Christmas stories featuring a talking and otherwise
anthropomorphic dog as the primary protagonist and title character. All of the stories are
heartwarming tales emphasizing the importance of friends, family, loyalty and perseverance. All
of the storiespresent with the primary problem of a decrease in the Christmas spirit. The
Christmas spirit is threatened to be eradicated by or measured by a magical device in each of the
stories. However, through the perseverance of a very special dog and his friends, Christmas is
saved in each of the stories for all of the good little boys and girls of the world and the Christmas
spirit lives on.
In addition to these high level similarities, Motion Pictures borrow many of the character
traits from Storybook for inclusion in Motion Pictures. For example, Storybook and Santa
Buddies: The Legend of Santa Paws(The First Picture) both take place in a small town and
feature a backstory of a father and son discussing the plight of an abundance of puppies. In
Storybook, the poor, but loving, father (Papa Deke) and son (Chad) discuss giving up their
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puppies. In The First Picture, the poor, but loving, father (Bob) and son (Mikey) talk about
getting a puppy from the dog catcher. Santa Claus receives Santa Paws as a gift in both
Storybook and The Second Picture.
Subsequent to receiving Santa Paws as a gift in Storybook, Santa Claus says, I am going
to call youPAWS. At the same point in The Second Picture, Santa Claus says, I will call
him Paws. The idea in both films was for Santa to receive a dog as a gift at Christmas time,
which Santa accepts and names Paws without officially dubbing him Santa Paws until such
time as the dog has proved his holiday mettle in saving Christmas and restoring the Christmas
spirit.
Even at a worms eye view, the similarities between Storybook and Motion Pictures are
prominent. The next and extremely unique idea that was pilfered by Movie Defendants from
Plaintiffs Storybook is the magical Christmas tree. In Storybook, the magical Christmas tree is
a character named Scotty. His decorative lights illuminate and dim to indicate the strength of the
Christmas spirit in the worlds boys and girls. In The First Picture, the magical Christmas tree is
a silent character. However, its decorative lights flicker on an off when the worlds boys and
girls lack the Christmas spirit. This is explained in The First Picture as an energy crisis. In
both Storybook and The First Picture the magical Christmas trees lights return to their shining
glory when Santa Paws saves Christmas and restores the Christmas spirit to the worlds boys and
girls. Thus, the magical Christmas tree is a barometer of Christmas spirit in both Storybook and
The First Picture.
Equally troubling to Plaintiffs is the presence in both Storybook and The First Picture of
the magical icicle. In Storybook and The First Picture, the icicle (or ice crystal as Movie
Defendants call it) is the instrument through which good and evil are carried out. In Storybook,
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the icicle is initially an instrument of evil. The antagonist uses it to shoot out a stream of liquid
ice to freeze Santa Claus in order to prevent him from performing his Christmas duties, thereby
threatening Christmas and killing the Christmas spirit. However, at the end of the Storybook,
Santa Paws uses the magical icicle for good. That is, he uses it to reverse the evil ice witchs
spell and thaws both Santa Claus and his reindeer. In Motion Pictures, the magical ice crystal
and giant icicle are solely instruments of good. The magical icicle in The First Picture hangs
outside Santas Palace and begins to melt as the Christmas spirit fades in the worlds boys and
girls. Interestingly, as the icicle melts it makes Santa Claus, Santa Paws and the other characters
lethargic. While not bringing them to a state of being frozen, the magical icicle certainly
operates to slow the protagonists down. The First Picture also features what Movie Defendants
refer to as magical ice crystals. This is worn around the characters necks and can be used much
in the same way Storybooks magical icicle works, like a magical wand.
For example, in The First Picture, Puppy Paws uses his ice crystal to turn another dogs
outfit into an elf suit. In separate additional displays of power, Puppy Paws transforms a Zen
garden into a Christmas winter wonderland. There are multiple other instances of the ice
crystals magical powers prior to the films triumphant conclusion of Puppy Paws using the
magical ice crystal to stock Bob and Mikeys familys cupboards and surround the Christmas
tree with gifts. At the same time, Christmas spirit has been restored and the magical icicle in
Santas palace grows back to its original size.
The Search for Santa Paws(The Second Picture), in which we learn the origin story for
Santa Paws, also features prominent use of the magical icicle in Santas compound. As
discussed earlier, Santa Paws originates as a stuffed dog in this film where he is befitted with a
magical ice crystal around his neck. When Christmas energy suddenly emanates like a laser
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beam from the icicle to the ice crystal, Santa Paws is transformed into a real dog. This is the
visual expression of the stream which flows from the magical icicle in Storybook. Throughout
the film, Santa Paws uses the magical ice crystal to escape from sticky situations and add the
Christmas spirit to people and places that need it.
Movie Defendants concede these facts relating to the icicles in Motion, but disagree
about the significance of same. See Motion at 15.
Plaintiffs would be remiss if they did not direct the Courts attention to the parallels
between being frozen in Plaintiffs Storybook and being in a coma in The Second Picture. In
Plaintiffs Storybook, Evila, the female antagonist, freezes Santa, thereby threatening to ruin
Christmas. In The Second Picture, Miss Stout, the female antagonist, inadvertently causes Santa
to meander into the street whereupon he is struck by a car and sent into a coma, thereby
threatening to ruin Christmas. This sequence is then followed by a search and rescue mission led
by Santa Paws in both Storybook and The Second Picture. At the conclusion of the mission in
both Storybook and The Second Picture, Santa Paws uses the power of the magical icicle to
unfreeze/awaken Santa Claus.
Finally, the bonding of Santa Paws and Santa Claus is completed in the final scenes of
Storybook and The Second Picture when Santa Paws is outfitted in a modified Santa suit. This is
the visual expression of the formation of a relationship that evolved throughout Storybook and
The Second Picture.
b. Plaintiffs Storybook Passes the intrinsic test.The similarity of ideas set forth above is more than sufficient to satisfy the extrinsic
analysis in which the Court must engage. In addition, the commonality of ideas transitions into
the Courts application of the intrinsic test, which focuses on the similarity of expression in the
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works. Rottlund Co., 452 F.3d at 731. Similarity of expression is evaluated using an intrinsic
test depending on the response of the ordinary, reasonable person to the forms of the expression.
Hartman, 833 F.2d at 120. Infringement occurs when the total concept and feel of the works are
substantially similar. Id. Thus, in order to grant the Motion, the Court must, to use the language
ofNelson, determine that reasonable minds could not differ as to the absence of substantial
similarity. Nelson 873 F.2d at 1143.
Plaintiffs earlier attempted to anecdotally convey the difficulty in comparing the
expression of a brief Storybook with the derivative of that Storybook embodied in a motion
picture. As this Court is aware, the expressive tools at a filmmakers disposal are vast and
distinct from those available to the author(s) of a childrens storybook. Similarly, the constraints
of the filmic medium build walls in the mind that a book does not.
Nonetheless, the subject media can overlap to some degree, in Plaintiffs opinion, with
regard to dialogue, mood/tone, setting, characters and theme. What decidedly cannot completely
overlap due to the inherent nature of adaptation of short works to feature length films is plot
sequence and pacing, two elements the Movie Defendants discuss in Motion. For the sake of
organization, Plaintiffs will address the factors listed above separately, but do so cautiously and
with great respect for the fact that all of these items are to be considered in the aggregate in
making a determination of whether an ordinary, reasonable jury could find substantial similarity.
That is, none of the factors discussed herein is to be given a predetermined amount of weight.
Dialogue: Movie Defendants discussion of dialogue correctly notes that Plaintiffs did
not, in their Complaint, identify specific lines of dialogue that are similar in the subject works.
Movie Defendants state that the dialogue in the subject works is markedly dissimilar and, in
support of this proposition, references the idiosyncratic speech of the buddies. As Movie
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Defendants are aware, the buddies in Motion Pictures are characters that are not present in
Plaintiffs work. Movie Defendants replaced the similarly situated friend characters in Plaintiffs
Storybook with the buddies, although they all serve the same narrative function. True to form,
the friend characters in Storybook have the same types of idiosyncratic speech that the buddies
exhibit. That is, Scotty Pine, from Colorado (or Coloradee, as he says) has a decidedly
western twang.
The Nutcracker is illustrated to be a very stiff character. He has a similarly stiff and
stereotypically British way of speaking, which is befitting of his costuming and position as
Santas Imperial Guard. Mercury, Santa Paws peer and closest friend in Storybook is given a
way of speaking that resembles a child for the purpose of helping the reader identify with him
and Santa Paws. In short, the peripheral characters that interact with Santa Paws feature
stereotypical ways of delivering dialogue in Storybook as well as Motion Pictures.
Moreover, there are three common pieces of dialogue that are absolutely critical to the
expression of all of the stories. They buoy the narratives in the subject works. At the beginning
of Storybook, young Chad asks Santa, [p]leasepleasetakeem as a gift from me as he is
giving Santa Paws to Santa Claus. At the beginning of The Second Picture, Santa receives the
gift of Santa Paws, in stuffed form, and responds by saying, a gift for me? These two lines of
dialogue form the foundation for the story that is about to be told and is the beginning of the
formation of the bond between Santa Claus and Santa Paws, which is the most critical
relationship in all of the subject works.
The dialogue in which the primary character comes to be named is also similar. In
Storybook, Santa Claus, upon receiving the dog as a gift, says, I am going to call you Paws. In
The Second Picture, upon receiving the dog as a gift, Santa Claus says, I will call him Paws.
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This similarity is very important insomuch as neither Santa Claus character names the dog
Santa Paws until such time as the dog has performed a Christmas miracle befitting such a
moniker.
Conversely, upon the conclusion of narrative contained in Storybook, Santa Claus states,
From now on your name will be Santa Pawsmy one and only dog. Upon the conclusion of
the narrative contained in The Second Picture, Santa says, Youre no longer a pup. Now your
name will be Santa Paws. The similarity here is very important. Not only is the dialogue
similar, but it comes at an identical point in the narrative and serves an identical purpose. That
is, it comes during the dnouement and serves as recognition of the protagonists achievement
and maturation. In Movie Defendants case, it serves as an explanatory foundation for the
prequel that is The First Picture.
As if pilfering the bookends of Plaintiffs Storybook were not enough, Movie Defendants
also lifted Plaintiffs language explaining the key problem in all of the subject works. In
Storybook, Santa lookspuzzled and states, I cant figure it outWhy are good boys and girls
misbehavingthey dont have the Christmas spirit. Someone or something is up to no good.
In Second Picture, Eddie the Elf states, Spirit is down, but there seems to be something else
going on. In The First Picture, Edie the Elf states, Ever since Mr. Hucklebuckles passing,
Christmas spirit has been out of whack. Each of these bits of dialogue serve to both identify the
problem to be solved and state (or inquire into) the genesis of the problem. Of course, in all of
the subject works, the problem is the same; something unknown is weakening the Christmas
spirit.
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Plaintiffs find the above similarities to be the most objectionable in the subject works and
urge the Court to find the similarities above sufficient to create a question of fact for the jury to
consider on the issue of substantial similarity.
Mood/Tone: Movie Defendants have characterized Plaintiffs Storybook as being
sinister in mood or tone because of the prominent presence of Evila, the ice witch. It is
respectfully suggested that Evila is no more sinister than the evil Miss Stout or the thief in Movie
Defendants Second Picture or the dogcatcher in Movie Defendants First Picture. Movie
Defendants characterize Motion Pictures as being lighthearted and sentimental to draw a contrast
between Motion Pictures and Storybook, but, in an effort to hedge their bets, Movie Defendants
cite 9th
Circuit precedent for the proposition that similarities of mood and pace that are common
to a genre are unprotectable and do not demonstrate substantial similarity.
First, Plaintiffs characterize their story as a feel good childrens story, much as Movie
Defendants fancy their Motion Pictures the same. Second, the 9th
Circuit does not govern this
Courts analysis. Third, even if the 9th Circuit did have persuasive capabilities here, this Court
can certainly consider mood as part of its determination of whether an ordinary reasonable jury
could make an infringement determination of whether the total concept and feel of the works
are substantially similar.
Setting: Plaintiffs have previously referenced that Storybook and Motion Pictures are of
significantly different lengths. This difference also impacts setting. With more time to fill,
Movie Defendants necessarily had to generate scenes which are not in Storybook. This reality
caused there to be many more settings in Motion Pictures than exist in Storybook.
However, there is substantial overlap in the settings present in Storybook with the
settings in Motion Pictures. Storybook starts out in, to use Movie Defendants phrase, the real
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world environs of the home of a humble Midwestern family. Plaintiffs acknowledge that they
did not state where in the world the Deke family lives. The Dekes could be anywhere in the
Midwest. Regardless, the location of the family is of no significance in any of the subject works.
Understandably, all of the subject works feature scenes in Santas palace and workshop.
This is not a particularly original location, which favors neither Plaintiffs nor Movie Defendants.
Plaintiffs will also concede that there is no analog in Motion Pictures for Evilas ice castle.
However, Plaintiffs find the depiction of the cave where Santa Claus keeps the magical
icicle to be similar to Evilas ice castle. Interestingly, the setting of the North Pole is something
the Court should examine further. The chase scene in Storybook in which Santa Paws is
attempting to traverse the icy terrain of the North Pole to get to Evilas ice castle is visually
similar to the Movie Defendants depiction of Santa Paws traversing the icy terrain of the North
Pole to get to the magical icicle in Santa Claus compound.
Characters: Plaintiffs, as noted above, readily accept that there are differences in the
characters in the subject works. This is, in part, due to the length of Motion Pictures. However,
there are certainly similarities between the tertiary characters in Plaintiffs work (Britt,
Nutcracker, Mercury and Scotty) and the buddies found in The First Picture. The implications
from a linquistic and dialogue perspective are noted hereinabove.
Naturally, the character of Santa Claus is not unique to the subject works. However, the
presence of Santa Claus in a Christmas story is not the basis upon which Plaintiffs have brought
this action. Movie Defendants are very much aware of this. This action is about Santa Paws,
Santa Claus dog. Plaintiffs version of Santa Paws aligns with the Santa Paws character
prominently featured in The Second Picture and featured less prominently in The First Picture.
Plaintiffs agree with Movie Defendants that Santa Paws does not begin as a stuffed animal in
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Storybook like he does in The Second Picture. [It should be noted that Plaintiffs used a prototype
of a stuffed plush Santa Paws doll to promote their story. In fact, upon information and belief,
the doll was so popular with co-Defendant WME that it was prominently displayed in an
executives office at WME as recently as 2010]. This distinction, however, is of little
significance when considering the overwhelming similarities in other character traits. These
traits include loyalty, determination and Christmas spirit. In addition, there is the relational
similarity in that the Santa Paws character is the pet of Santa Claus in all of the subject works.
The name of the character is obviously constant across the subject works, including an alignment
of when the character goes from Paws to Santa Paws on account of his heroic deeds.
The character is similarly costumed in Storybook and Motion Pictures as well insomuch
as Santa Claus outfits Santa Paws to match the attire of Santa Claus. As discussed previously,
the origin for the character, being a gift to Santa Claus, is identical in Storybook and The Second
Picture (which provides the backstory for The First Picture). Plaintiffs respectfully suggest to
this Court that the aggregated similarities in the Santa Paws characters overwhelmingly favor
Plaintiffs and warrant the continuation of this litigation on the basis that the combination of all of
these similarities could give rise to an ordinary, reasonable person finding a substantial similarity
between the subject works.
Theme: Again Movie Defendants raise a factor to be considered in the substantial
similarity analysis only to cite 9th Circuit law indicating that it is not protectable. Just as in the
case of mood, theme is something to be considered in evaluating the audiences reaction to the
expression contained in the subject works. The themes of the subject works are unmistakably
similar. When viewed through the lens of an ordinary, reasonable person, particularly the
younger segment of the intended audience, the themes are virtually indistinguishable.
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First, Plaintiffs make note that the screenplay corresponding to The First Picture begins
by adopting the format of a storybook. This format persists until page 9 of the screenplay.
Ultimately, however, the storybook format is not utilized in the final version of The First Picture.
Movie Defendants assert that The First Picture emphasizes the importance of taking
responsibility for the happiness of others. Plaintiffs counsel must confess that Plaintiffs
believe that to be a poor and dangerous theme to send to any audience, let alone an
impressionable audience. However, that is not the theme Plaintiffs or their counsel detected
during multiple viewings of The First Picture. Plaintiffs found The First Picture to be a coming-
of-age tale with lessons in loyalty and the power of friendship, among other gems.
The Second Picture, as Movie Defendants note, does signal the power of love and
loyalty between man and dog, but not only between man and dog. The theme is love and
loyalty, not love and loyalty only between man and dog.
Movie Defendants assert Storybook is purely an underdog story and that the only
similarity between the subject works is the emphasis on the importance of the Christmas spirit.
Movie Defendants then assert that the Christmas spirit is too clichd to be protectable. Not to
worry, a paragraph earlier Movie Defendants asserted that no theme is protectable, which leaves
one to wonder why a discussion of the presence or absence of clich is of any moment here.
Plaintiffs work encompasses themes of loyalty, determination, courage, friendship, maturation,
belonging and, yes, the Christmas spirit.
However, contrary to Movie Defendants representations in Motion, the Christmas spirit
theme is presented very similarly to that in The Second Picture. Specifically, the Christmas
spirit is kept alive by Paws act of courage and loyalty to Santa Claus and by some Christmas
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magic (using the magical icicle to unfreeze Santa Claus). The viewer would likely determine the
themes in all of the subject works to be substantially similar. This factor favors the Plaintiffs.
IV. PLAINTIFFS CIVIL CONSIPIRACY COUNT SHOULD NOT BEDISMISSED.
Movie Defendants request this Court to dismiss Plaintiffs Civil Conspiracy cause of
action because, as a matter of law, there is no infringement. As more fully set forth
hereinabove, Plaintiffs have properly set forth a cause of action against all Defendants, including
Movie Defendants, for Copyright Infringement. Plaintiffs fully recognize that the civil
conspiracy cause of action is dependent upon a finding of liability on another count and,
accordingly, concede that this Count should be dismissed only in the event that every other count
is dismissed as to every defendant.
WHEREFORE Plaintiffs respectfully request this Honorable Court deny Defendants
Motion to Dismiss and for such other and further relief as this Court may deem just and proper
under the circumstances.
KODNER WATKINS KLOECKER, LC
By:____/s/ Albert S. Watkins__________________
ALBERT S. WATKINS, #34553MO
MICHAEL D. SCHWADE, #60862MO7800 Forsyth Boulevard, Suite 700
St. Louis, Missouri 63105
(314) 727-9111(314) 727-9110 Facsimile
E-mail: Albertswatkins@kwklaw.net
MSchwade@kwklaw.net
CERTIFICATE OF SERVICE
The signature above is also certification that a true and correct copy of the above andforegoing document was filed electronically this 26st day of March, 2012 utilizing the CourtsCM/ECF filing system which will cause a true and correct copy of same to be served upon all
counsel of record.
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