Response to Disney's MTD

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.

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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.

Case: 4:11-cv-02207-CDP Doc. #: 43 Filed: 03/26/12 Page: 1 of 25 PageID #: 562


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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

http://dx.doi.org/10.2139/ssrn.1661434http://dx.doi.org/10.2139/ssrn.1661434http://dx.doi.org/10.2139/ssrn.1661434http://dx.doi.org/10.2139/ssrn.1661434


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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: [email protected]

[email protected]

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.

mailto:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]:[email protected]

Documents

Response to Disney's MTD