Is discovery needed to decide substantial similarity?

On Monday, a panel of the 9th U.S. Circuit Court of Appeals heard argument in Zindel v. Fox Searchlight Pictures, 18-56087. This case presents a recurring issue in copyright infringement litigation: Can a district court properly decide at the pleading stage -- before discovery -- whether two literary works are substantially similar as a matter of law?

The answer to this question should be "Yes." All courts typically need to decide substantial similarity is the two works at issue, which they usually have before them on a motion to dismiss. If plaintiffs cannot articulate why discovery is needed to decide the issue, courts should be empowered to resolve the merits at the pleading stage. The 9th Circuit should use this opportunity to make this the clear law of the circuit.

A Hit Film Garners Oscars... and a Lawsuit

In Zindel, the plaintiff alleges that the 2017 motion picture "The Shape of Water" -- which won four Academy Awards, including for best picture -- infringes the 1970 copyrighted screenplay "Let Me Hear You Whisper." In "The Shape of Water," a mute woman named Elisa, a cleaner at a high-security government laboratory, falls in love with a humanoid amphibian creature. By contrast, in "Let Me Hear You Whisper," a cleaner named Helen discovers a dolphin trained to speak. Once she discovers that scientists plan on killing the animal, she hatches a plan to help it escape.

Though there are some similarities between the screenplay and the film -- for example, both works are set in a laboratory, and the protagonists are both cleaners -- there are obvious differences as well. Few would confuse a talking dolphin with a humanoid amphibian, for instance.

In the court below, Judge Percy Anderson granted the defendant's motion to dismiss. In doing so, he compared both works on the elements courts look to in deciding substantial similarity (for example, plot, characters and theme), and determined that they were not substantially similar as a matter of law. Zindel appealed.

An Issue of Interest to the 9th Circuit

Given the plethora of film and television production companies in California, it is unsurprising that California district courts frequently hear copyright infringement claims involving such literary works. It has become commonplace for courts to dismiss these claims at the pleading stage for a lack of substantial similarity. See, e.g., Masterson v. The Walt Disney Co., 2019 WL 1581400 (C.D. Cal. Jan. 1, 2019) (about the film "Inside Out"); Shame on You Prods., Inc. v. Banks, 120 F. Supp. 3d 1123 (C.D. Cal. 2015) (about the film "Walk of Shame"). Although the 9th Circuit has had several opportunities to set precedent on whether such dismissals are appropriate, it has not done so. See, e.g., Esplanade Prods., Inc. v. The Walt Disney Co., 768 Fed. App'x 732 (9th Cir. Apr. 24, 2019) (unpublished) (involving the film "Zootopia").

This is somewhat curious because this issue has drawn considerable interest of members of the court. For example, in Astor-White v. Strong, the court reviewed the dismissal of a copyright infringement claim about the hit television show "Empire." 733 Fed. App'x 407 (9th Cir. 2018) (unpublished). A majority of the panel reversed to give the plaintiff an opportunity to allege additional facts as to the points of similarity between the two works. Judge Jacqueline Nguyen dissented, arguing that amendment would be futile because "[b]oth works were before the district court for review" and asking "what additional facts could change the outcome[?]" Id. at 412. Judge Kim Wardlaw -- coincidentally, one of the panel members in Zindel -- issued a concurring opinion responding to Judge Nguyen, expressing concern "the district court judge performed the entire substantial [similarity] analysis himself, in chambers, without the benefit of even a hearing," and that dismissals at the pleading stage, before discovery, should be "disfavored." Id. at 409. This was, in my view, an unusual exchange in a case that did not set precedent, signaling the judges' significant interest in the issue.

Judges of the court also debated this issue in another copyright infringement case involving photographs. In Rentmeester v. Nike, Inc., the 9th Circuit affirmed -- in a published opinion -- the court's dismissal of a copyright infringement claim for lack of substantial similarity. 883 F.3d 1111 (9th Cir. 2018). While the majority concluded that dismissal was appropriate because the two works at issue were "properly before us and thus capable of examination and comparison," Judge John Owens dissented, arguing that the majority "substituted its own judgment" for that of the jury. Id. at 1123, 1128.

Deciding Substantial Similarity at the Pleading Stage Should Be Endorsed

It is settled law that courts can decide substantial similarity at summary judgment. See, e.g., Benay v. Warner Bros. Entm't, 607 F.3d 620 (9th Cir. 2010). Why not at the pleading stage? Plaintiffs often argue that discovery is needed, but they do not typically explain what specific discovery the court needs to decide substantial similarity.

The plaintiff in Zindel, for example, asserts that expert discovery is required, arguing in his brief on appeal that "the need for expert analysis is particularly acute where, as here, a court must compare a stage play to a full-blown film ... and consider the interplay and impact of their literary and aesthetic elements." Zindel v. Fox Searchlight Pictures, Inc., 18-56087, Dkt. No. 12, at 38 (9th Cir. Dec. 10, 2018). But literary works -- in particular, films and television shows -- are typically understandable by lay people. Is an expert opinion really needed for a court to compare a screenplay and a film in their plots, characters, themes, or the other elements courts look to in determining substantial similarity?

Plaintiffs also sometimes argue that the court needs discovery from those involved in creating the allegedly infringing work before deciding the substantial similarity issue. But finding out what those involved in the creative works were thinking when they created the works is not relevant to the substantial similarity question. What matters is the finished works themselves.

In my view, the question whether substantial similarity should be decided at the pleading stage boils down to what does the court need, aside from the works at issue, to decide the issue. If a plaintiff cannot persuade a court exactly what expert or fact discovery is needed, then courts should be empowered to decide the issue at the pleading stage. Zindel is a great opportunity for the 9th Circuit to do so. 