           RECOMMENDED FOR FULL-TEXT PUBLICATION
                Pursuant to Sixth Circuit Rule 206                         2       Stromback v. New                          Nos. 02-2387/2388
        ELECTRONIC CITATION: 2004 FED App. 0314P (6th Cir.)                        Line Cinema, et al.
                    File Name: 04a0314p.06
                                                                                                  _________________
UNITED STATES COURT OF APPEALS                                                                          COUNSEL
                  FOR THE SIXTH CIRCUIT                                    ARGUED:        Andrew J. Kochanowski, SOMMERS,
                    _________________                                      SCHWARTZ, SILVER & SCHWARTZ, Southfield,
                                                                           Michigan, for Appellant. Herschel P. Fink, HONIGMAN,
 DOUGLA S ALAN STROMBACK , X                                               MILLER, SCHWARTZ & COHN, Detroit, Michigan, for
            Plaintiff-Appellant/ -                                         Appellees. ON BRIEF:         Andrew J. Kochanowski,
                Cross-Appellee, -                                          SOMMERS, SCHWARTZ, SILVER & SCHWARTZ,
                                    -  Nos. 02-2387/2388                   Southfield, Michigan, for Appellant. Herschel P. Fink,
                                    -                                      HONIGMAN, MILLER, SCHWARTZ & COHN, Detroit,
            v.                       >                                     Michigan, for Appellees.
                                    ,
                                    -
 NEW LINE CINEMA ,                                                                                _________________
                                    -
           Defendant-Appellee/ -                                                                      OPINION
               Cross-Appellant, -                                                                 _________________
                                    -
                                    -                                        GORDON J. QUIST, District Judge. Plaintiff, Douglas
 LARRY HESS, et al.,
                                    -                                      Alan Stromback ("Stromback"), sued Defendant, New Line
        Defendants-Appellees. -
                                                                           Cinema ("NLC"), and others, alleging violations of the
                                   N                                       Copyright Act, 17 U.S.C. § 106, and the Lanham Act,
       Appeal from the United States District Court                        15 U.S.C. § 1125, and alleging various state law claims under
      for the Eastern District of Michigan at Detroit.                     Michigan and/or California law. Stromback's claims all arise
  No. 01-73898—John Corbett O’Meara, District Judge.                       out of his allegations that the movie "Little Nicky," which is
                                                                           owned and distributed by NLC, infringes Stromback's poem
                      Argued: June 8, 2004                                 entitled "The Keeper" as well as his original treatment and
                                                                           outline of a screenplay based upon "The Keeper" poem
            Decided and Filed: September 14, 2004                          entitled "The Keeper."1 The district court granted summary
                                                                           judgment to NLC on all of Stromback's claims and dismissed
 Before: MARTIN and SUTTON, Circuit Judges; QUIST,
                  District Judge.*
                                                                               1
                                                                                 Stromback also sued the three credited screenwriters, Adam Sandler,
                                                                           Steven Brill, and Tim Herlihy, and two o ther individuals. Stromback
    *
                                                                           eventually dismissed the screenwriters without prejudice and did not serve
     The Honorable Gordon J. Quist, United States District Judge for the   summons on the other two individuals. Therefore, the case proceeded
W estern District of Michigan, sitting by designation.                     only against NLC.

                                   1
Nos. 02-2387/2388                           Stromback v. New            3    4       Stromback v. New                           Nos. 02-2387/2388
                                           Line Cinema, et al.                       Line Cinema, et al.

the case. Stromback filed this timely appeal. We affirm on                   California, "John." Racial themes are presented throughout
all issues.                                                                  the story. Ted is white. Ted's adoptive mother is "Martina,"
                                                                             an older black lady. Ted's grandfather, "Fred," is an 87-year-
 I. FACTUAL AND PROCEDURAL BACKGROUND                                        old black man who lives in a nursing home and is apparently
                                                                             losing his mental faculties. When Ted was young, Fred
  In late 1998 and early 1999, Stromback, an actor, aspiring                 taught Ted to speak in rhymes, as Ted often does throughout
screenwriter, and former professional hockey player, created                 the story. Fred thought that being able to rhyme was the
an original poem entitled "The Keeper." Stromback then                       secret to succeeding in life because Muhammed Ali spoke in
created an original treatment and original outline of a                      rhymes. Fred told Ted that he was teaching Ted how to
screenplay based upon "The Keeper" poem and entitled each                    rhyme so that Ted would deliver the family "from the gutter."
one "The Keeper." Later, Stromback created several original                  Ted regularly talks to himself in his apartment, apparently
screenplays of "The Keeper." Stromback registered the poem                   responding in a schizophrenic manner to voices inside his
and a version of the screenplay with the Copyright Office.                   head. Ted asks Martina to explain the voices and why he is
Stromback also registered several versions of the screenplay                 troubled but she is reluctant to tell him the truth, which is that
with the Writers Guild of America.                                           he was abandoned in a dumpster as a baby by his birth
                                                                             mother. Eventually, Ted's mother told him that they found
   Stromback alleges that in early 1999, he shared the poem                  him on church grounds and that his mother was an eighteen
and the screenplay with Larry Hess and John Apothaker to                     year old girl who was having an affair with a politician.
solicit their comments on his work. According to Stromback,
Hess and Apothaker subsequently passed copies of "The                           The story opens with Ted starting a new job at the "national
Keeper" poem and screenplay to NLC. In November 2000,                        paper." Ted is hired to work in the basement of the building
NLC released a movie it produced called "Little Nicky,"                      organizing old files. Ted's boss, "Dave," calls the basement
starring Adam Sandler. Stromback alleges that after seeing                   "the cave" or "the dungeon." Ted works in the evening and
"Little Nicky" in the theater, he realized that it contained                 often sleeps during work. Ted is attracted to a female writer
substantial similarities to his works, including similarities in             named "Sue." Ted concocts and carries out a plan to
theme, character treatment and development, idiosyncratic                    approach Sue in the dark and reveal his feelings toward her
character traits, and scene selection. A description of the two              through a rhyme. Sue figures out that Ted was the person who
works follows.2                                                              approached her in the dark but she won't date him because he
                                                                             is "totally weird."
  The Keeper
                                                                               Shortly after he begins working at the national paper, Ted
  The registered screenplay version of "The Keeper" is a                     begins to obsess about Governor John.3 Governor John is
story about "Ted," who brings down the corrupt Governor of

                                                                                 3
    2
                                                                                   Stromback claims that the reader can infe r that the p olitician with
     In its opinion, the district court stated that it was adopting          whom Ted's birth mother had the affair was Governor John's father,
Stromb ack's description of the two works in light of the fact that it was   making Governor Jo hn Ted's evil brother or half-brother. However, the
deciding substantial similarity at the summary judgment stage.               only basis for this inference is Stromback's subjective reading of the text.
Nos. 02-2387/2388                    Stromback v. New        5    6      Stromback v. New                    Nos. 02-2387/2388
                                    Line Cinema, et al.                  Line Cinema, et al.

portrayed as a power hungry politician who does no real work          Little Nicky
and whose ambition is to become president and take over the
world. Ted believes that Governor John is "cocky and                Little Nicky is a "comedy" about the Devil, "Satan," and his
arrogant" as well as evil, and at various times Ted refers to     three sons: "Casius," the strong, tough son; "Adrian," the
Governor John as the devil. Ted begins a campaign against         smart, ruthless son; and "Nicky," the weaker, sweet son, who
Governor John by sending anonymous rhyming riddles to the         also has a speech impediment caused by his brother hitting
national paper that the newspaper prints in its editorial page.   him in the face with a shovel. Adrian and Casius frequently
Eventually it is revealed that Ted has been reading about a       pick on Nicky and "mind wrestle" with him, causing him to
"Jokela murder case," in which a reporter ("Jokela") was          do or say things against his will. The grandfather, "Lucifer"
murdered in the same basement in which Ted now works.             (Rodney Dangerfield), appears occasionally but does not
Jokela discovered that the then-secretary of state (Governor      really interact with Nicky.
John's father) was involved in a cult having "some thing to do
with the devil." Governor John's father was the prime suspect       The movie opens with Satan trying to decide if he should
in the murder but "got off the hook and the case never went to    retire after 10,000 years of rule. If he does, one of his sons
trial." He went on to have a distinguished career as Governor.    would take over Hell. Casius and Adrian both want the job.
Ted knows that Governor John's father was responsible for         Nicky does not want it and prefers that his father keep the job.
the murder and includes clues about it in his riddles.            Satan decides to keep the job and rule for another 10,000
                                                                  years in order to maintain the balance between good and evil
   Governor John reads the riddles and eventually catches on      (he does not believe that his sons are capable of doing this).
that the author is out to get him. The Governor and his           Casius and Adrian are furious at this decision and plan to
henchmen decide to kill "that rhyming dude." Ted reveals          escape to Earth, where they will try to corrupt as many souls
himself to the Governor and dares him to "get me if you can."     as possible (to threaten the balance between good and evil) in
Governor John arranges for three individuals to find and          their quest to assume control. During their escape, Casius and
murder Ted at the national paper. However, Ted sets a trap in     Adrian travel through a wall of fire, by which damned souls
which he uses his "good friend," "Scott," to trick the hit-man    are intended to fall into, but not leave, Hell. Adrian and
into thinking that Scott is actually Ted. The hit-man ends up     Casius cause the wall of fire to freeze and a logjam of souls
killing Scott. Having video-taped the murder, Ted tells a         ensues outside the wall of fire. Without new souls entering,
dying Scott: "I needed you, you were a good friend, but           Satan begins to decompose. His only hope is to send Nicky
everybody needs a ladder to get to the top. You're my ladder      to Earth to force his brothers to drink from a magic flask, in
scott [sic]."                                                     which they will be trapped. Once he has his brothers inside
                                                                  the flask, Nicky must pass through the wall of fire and return
  Ted shows the tape of the murder to the police, who             to Hell, which will save Satan.
eventually link the murder to Governor John. The story ends
with the Governor going to jail and Ted being elected as the         Nicky travels to New York City, where Satan's friend, a
Governor of California. On election night Sue goes to Ted's       talking dog, "Beefy," serves as Nicky's guide. Nicky is also
hotel room, where he rapes her. Sue has no recourse because       assisted by two cult-worshiping "groupies" named "John" and
Ted now has the power. Ted calls Sue a "bitch" as she leaves.     "Pete." Beefy, John, and Pete all want Nicky to "release his
                                                                  inner evil" in order to overpower Casius and Adrian. Nicky
Nos. 02-2387/2388                      Stromback v. New         7    8       Stromback v. New                          Nos. 02-2387/2388
                                      Line Cinema, et al.                    Line Cinema, et al.

has a difficult time finding his brothers because they hide by          Stromback filed his complaint on October 15, 2001, and
randomly "possessing" humans. Casius possesses the Mayor             filed an amended complaint in December 2001.4 Stromback's
of New York and lowers the drinking age from 21 to 10,               amended complaint alleged claims for copyright
causing chaos. All three of them have a difficult time               infringement; reverse passing off in violation of the Lanham
adapting to Earth's cold weather.                                    Act; commercial misappropriation; breach of quasi contract;
                                                                     misappropriation of trade secrets; breach of the implied duty
   While on Earth, Nicky meets and falls in love with a              of good faith and fair dealing; unfair competition/unjust
woman named "Valerie." During a chance encounter, Adrian             enrichment; and interference with prospective economic
mind wrestles with Nicky and causes him to insult Valerie.           advantage. On September 13, 2002, NLC, the only remaining
However, Nicky wins back Valerie's affection by telling her          defendant, moved for summary judgment. At that time, the
the truth about his family and mission on Earth. During the          case had been pending for about a year and Stromback had
story, Nicky is killed several times (e.g., by a train or bus) and   not sought a Rule 16 conference with the district court, nor
is sent back to Hell, where he is re-dispatched to Earth. The        had he sought any discovery. In his response, Stromback
final time, Nicky dies trying to save Valerie and goes to            argued that summary judgment should be denied because he
Heaven. There, he meets an angel named "Holly," who turns            needed to conduct discovery on whether the various
out to be his mother. Holly tells Nicky that she met Satan at        screenplays leading up to the final product (the movie)
a "Heaven and Hell Mixer." Holly tells Nicky releasing his           infringed on "The Keeper" poem or screenplay. The district
inner good is the key to victory over his brothers. Holly also       court found that the movie was the only relevant work
gives Nicky a magic sphere from God for Nicky to use when            because only the movie, and not the various versions of the
it is time.                                                          screenplays leading up to the movie, were published to the
                                                                     public and because Stromback alleged in his amended
   Nicky manages to trap Casius in the magic flask, but              complaint only that the movie was an infringing work. The
Adrian has assumed the throne of Hell and has caused Hell to         district court concluded that NLC was entitled to summary
rise through Central Park in New York. At the stroke of              judgment on the copyright infringement and Lanham Act
midnight, all of New York's souls will be damned and belong          claims because no reasonable jury could find that "Little
to Adrian in Hell. Nicky uses the magic sphere, releasing            Nicky" is substantially similar to "The Keeper" poem or
"good" versus "evil." Nicky smashes the magic sphere and             screenplay. The district court also concluded that summary
Ozzy Osbourne (a rock star with a reputation for biting the          judgment was proper on Stromback's state law claims on the
heads off bats) appears and bites off Adrian's head (who             basis that they are preempted by § 301 of the Copyright Act.
appears in the form of a bat) and spits it into the magic flask.
Nicky then commits one last superficially bad act to ensure
that he will be sent to Hell. Valerie tells Nicky that she loves
him and then smashes him on the head with a rock (out of
love) to kill him and send him back to Hell. Satan is saved
and the balance between good and evil is restored. Satan                 4
sends Nicky back to Earth to be with Valerie and they have a               In addition to alleging that "Little Nicky" infring ed "The Keeper,"
                                                                     Stromback also initially alleged that the movie "Mr. Deeds" was an
son and live happily ever after.                                     infringing work. Stromback eventually dropped the allegation regarding
                                                                     "M r. Deeds."
Nos. 02-2387/2388                      Stromback v. New        9    10   Stromback v. New                      Nos. 02-2387/2388
                                      Line Cinema, et al.                Line Cinema, et al.

                       II. ANALYSIS                                    Since direct evidence of copying is rarely available, a
                                                                    plaintiff may establish "an inference of copying by showing
A. Standard of Review                                               (1) access to the allegedly-infringing work by the
                                                                    defendant(s) and (2) a substantial similarity between the two
  Stromback contends that the district court erred in granting      works at issue." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir.
summary judgment to NLC on his various claims. In                   1999); see also Arica Inst., Inc. v. Palmer, 970 F.2d 1067,
reviewing a district court's grant of summary judgment, this        1072 (2d Cir. 1992). "Access is essentially 'hearing or having
Court applies a de novo standard. See E.I. Du Pont De               a reasonable opportunity to [view] the plaintiff['s] work and
Nemours & Co. v. Okuley, 344 F.3d 578, 584 (6th Cir. 2003).         thus having the opportunity to copy.'" Ellis, 177 F.3d at 506
Summary judgment is proper only if there is no genuine issue        (quoting Tree Publ'g Co. v. Warner Bros. Records, 785 F.
as to any material fact and the moving party is entitled to         Supp. 1272, 1274 (M.D. Tenn. 1991)). In Ellis, we observed
judgment as a matter of law. See Fed. R. Civ. P. 56(c). The         that in some cases the relationship between the degree of
proper inquiry is whether the evidence is such that a               proof required for similarity and access may be inversely
reasonable jury could return a verdict for the plaintiff. See       proportional: where the similarity between the two works is
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.          strong, less compelling proof of access may suffice, and vice-
Ct. 2505, 2512 (1986).                                              versa. Id. at 507. See Three Boys Music Corp. v. Bolton, 212
                                                                    F.3d 477, 485 (9th Cir. 2000) (stating that under the "inverse
B. Copyright Infringement Claim                                     ratio rule," a lower standard of proof of similarity is required
                                                                    where a high degree of access is shown); Arnstein v. Porter,
  The Copyright Act provides protection for original works          154 F.2d 464, 469 (2d Cir. 1946) (stating that "a case could
of authorship expressed in various media. 17 U.S.C. §§ 101-         occur in which the similarities were so striking that we would
1332. Subject to certain exceptions not applicable here, the        reverse a finding of no access, despite weak evidence of
owner of a copyright has the exclusive rights (1) to reproduce      access (or no evidence thereof other than the similarities)").
the copyrighted work; (2) to prepare derivative works; (3) to       For purposes of its motion for summary judgment, NLC
distribute copies; (4) to perform publicly a copyrighted work;      conceded the issue of access, electing to focus solely on the
and (5) to display publicly a copyrighted work. 17 U.S.C.           issue of substantial similarity of the two works.
§ 106. A plaintiff may bring a claim against a person who
infringes any of the plaintiff's exclusive rights in a copyright       In ruling on NLC's motion, the district court observed,
under § 106 by demonstrating two elements: "(1) ownership           correctly, that the Sixth Circuit had not formally adopted a
of a valid copyright; and (2) copying of constituent elements       specific test or approach for determining substantial similarity
of the work that are original." Feist Publ'ns, Inc. v. Rural Tel.   in copyright cases. Drawing on statements in Diffie as well
Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296 (1991);         as prior decisions from the Eastern District of Michigan, the
accord Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003).          district court applied the "ordinary observer" test, which
The parties do not dispute Stromback's ownership of a valid         allows the trier of fact to gauge his "net impression" of the
copyright in "The Keeper" poem and screenplay. Thus,                two works by conducting a side-by-side comparison without
copying is the only issue in dispute.                               the benefit of expert testimony or dissection. (Dist. Ct. Op.
                                                                    at 8.) The district court rejected Stromback's argument that it
                                                                    should apply the two-part test employed by the Ninth Circuit,
Nos. 02-2387/2388                      Stromback v. New        11    12    Stromback v. New                      Nos. 02-2387/2388
                                      Line Cinema, et al.                  Line Cinema, et al.

which consists of an extrinsic test and an intrinsic test, see Sid     F.3d 1042 (9th Cir. 1994)], the first part of our test
& Marty Krofft Television Prods., Inc. v. McDonald's Corp.,            remains more free in form than the Ninth Circuit's
562 F.2d 1157, 1164 (9th Cir. 1977), although the district             extrinsic test.
court did state that summary judgment would be improper at
that stage if the Sixth Circuit employed the "extrinsic" test        Id. In addition, for purposes of summary judgment, the Ninth
because expert discovery had not occurred. Subsequent to the         Circuit considers only the extrinsic test, while the intrinsic
district court's opinion and order granting summary judgment         test is reserved for the jury. See Kouf, 16 F.3d at 1045 ("A
and dismissing the case, this court adopted a two-part test in       plaintiff avoids summary judgment by satisfying the extrinsic
Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003), which follows         test which makes similarity of the works a triable issue of
the test employed by the D.C. Circuit in Sturdza v. United           fact."). In contrast, a court considers both parts of our test in
Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002). We stated             determining substantial similarity on a motion for summary
that "the first step 'requires identifying which aspects of the      judgment. See Kohus, 328 F.3d at 857-58 (discussing the
artist's work, if any, are protectible by copyright,' [and] the      district court's analysis on remand under both prongs of the
second 'involves determining whether the allegedly infringing        test). This remains consistent with our prior observation that
work is"substantially similar" to protectible elements of the        while summary judgment in favor of a defendant in a
artist's work.'" Kohus, 328 F.3d at 855 (quoting Sturdza).           copyright case is a practice that should be used sparingly, in
This test is really just a refinement of the ordinary observer       an appropriate case, "a court may compare the two works and
test that, as its initial step, parses from the work the elements    render summary judgment for the defendant on the ground
neither afforded copyright protection nor properly considered        that as a matter of law a trier of fact would not be permitted
in the ordinary observer test. "The essence of the first step is     to find substantial similarity." Wickham v. Knoxville Int'l
to filter out the unoriginal, unprotectible elements–elements        Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984)
that were not independently created by the inventor, and that        (citations omitted); accord Kohus, 328 F.3d at 853.
possess no minimal degree of creativity, through a variety of
analyses." Id. (citation omitted). Our test is similar to the          Our decision in Kohus answers one of Stromback's central
Ninth Circuit's test, because the first part, like the Ninth         arguments on appeal, namely, that the district court erred by
Circuit's extrinsic test, requires a determination of only the       conducting a side-by-side comparison of the two works rather
expressive elements of a work, while the second part, like the       than applying the extrinsic/intrinsic test or some other test
Ninth Circuit's intrinsic test, asks whether the ordinary,           that allows for analytic dissection of what Stromback
reasonable observer would find the works, taken as a whole,          characterizes as "complex copyright subject matter." Though
to be substantially similar. Murray Hill Publ'ns, Inc. v.            the district court failed to apply the proper two-part test, we
Twentieth Century Fox Film Corp., 361 F.3d 312, 318 (6th             need not remand the case because the issue presented is one
Cir. 2004).                                                          of law. See, e.g., Chase Manhattan Bank, N.A. v. Am. Nat'l
                                                                     Bank & Trust Co., 93 F.3d 1064, 1072 (2d Cir. 1996) ("An
    However, significant differences remain in both parts.           appellate court has the power to decide cases on appeal if the
  In particular, we apply a more stringent standard                  facts in the record adequately support the proper result or if
  regarding when to allow expert testimony on the first part         the record as a whole presents no genuine issue as to any
  of the test. Also, not having adopted the eight Kouf               material fact. . . . Thus, if we find that a party must prevail as
  factors [Kouf v. Walt Disney Pictures & Television, 16             a matter of law, a remand is unnecessary.") (internal quotation
Nos. 02-2387/2388                               Stromback v. New            13     14     Stromback v. New                     Nos. 02-2387/2388
                                               Line Cinema, et al.                        Line Cinema, et al.

marks and citations omitted); Trierweiler v. Croxton &                             "will assist the trier of fact to understand the evidence or to
Trench Holding Corp., 90 F.3d 1523, 1539 (10th Cir. 1996)                          determine a fact in issue." However, where, as here, the
("In the present case, the debate is purely legal, and remand                      subject matter is not complex or technical, such as a computer
on this issue is unnecessary"). That is, the district court                        program or a functional object, see, e.g., Gates Rubber Co. v.
applied the ordinary observer test – the second part of the                        Bando Chem. Indus., Ltd., 9 F.3d 823, 834-35 (10th Cir.
Kohus test – without first filtering out the unoriginal,                           1993) (noting that in most cases involving computer programs
unprotectible elements of "The Keeper" poem and screenplay.                        expert testimony will be helpful to the court in applying an
To the extent that the district court considered both                              abstractions test), but instead involves a literary work aimed
protectible and unprotectible elements of Stromback's works,                       at a general audience, expert testimony will seldom be
the inquiry for purposes of this appeal remains the same –                         necessary to determine substantial similarity. See Nichols v.
whether the district court's conclusion of no substantial                          Universal Pictures Corp., 45 F.2d 119, 123 (1930) (Hand,
similarity was correct.5                                                           Learned) ("[Expert testimony] ought not to be allowed at all;
                                                                                   and while its admission is not a ground for reversal, it
   Nor is remand required for consideration of expert                              cumbers the case and tends to confusion, for the more the
testimony, as the district court believed might be the case                        court is led into the intricacies of dramatic craftsmanship, the
under the extrinsic/intrinsic test. Even in the Ninth Circuit                      less likely it is to stand upon the firmer, if more naive, ground
expert testimony is not a requisite for a copyright                                of its considered impressions upon its own perusal.");
infringement case. See Apple Computer, Inc. v. Microsoft                           Kindergartners Count, Inc. v. Demoulin, 249 F. Supp. 2d
Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (stating that a court                    1214, 1232 (D. Kan. 2003) ("Unlike technical computer
may use expert testimony, "if necessary," to determine                             programs, the trier of fact does not need an expert to compare
whether any of the allegedly similar features are subject to                       two literary works that are expressed in simple English.");
copyright protection). Our test "appl[ies] a more stringent                        Costello v. Loew's Inc., 159 F. Supp. 782, 789 (D.D.C. 1958)
standard regarding when to allow expert testimony on the first                     ("No amount of expert or lay testimony as to fancied
part of the test." Murray Hill Publ'ns, Inc., 361 F.3d at 318.                     similarities could change the obvious content of the exhibits
We remanded in Kohus in part because the copyright involved                        before the court . . . . Nor could expert testimony affect the
a latch for a portable children's play yard, and we thought that                   spontaneous and immediate impression of the plaintiff's and
expert testimony would be necessary to determine whether                           defendant's literary works upon the mind of the ordinary
certain elements of such a latch should be excluded from the                       observer."). Therefore, we reject Stromback's suggestion that
substantial similarity analysis. See Kohus, 328 F.3d at 856.                       expert testimony is necessary in this case.
Whether expert testimony should be allowed in a particular
case remains a matter committed to the discretion of the trial                       1.    Filtering of Unprotected Elements
court under Federal Rule of Evidence 702 if such testimony
                                                                                     Although there is no clear line separating protected from
                                                                                   nonprotected work, two principles help to guide that
     5                                                                             determination in this case. See Kohus, 328 F.3d at 855-56.
       Although the district co urt did not pu rport to apply the two-part test,   First, copyright protection extends only to expression of ideas
it in fact did so as part of its analysis when it observed that many of the
alleged similarities, such as the concepts of Hell and the devil, are too
                                                                                   and not to ideas themselves. 17 U.S.C. § 102(b); Mazer v.
com mon place and not pro tected.                                                  Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 470 (1954) ("Unlike
Nos. 02-2387/2388                      Stromback v. New        15   16    Stromback v. New                      Nos. 02-2387/2388
                                      Line Cinema, et al.                 Line Cinema, et al.

a patent, a copyright gives no exclusive right to the art           parties, alcohol, co-eds, and wild behavior are natural
disclosed; protection is given only to the expression of the        elements in a story about a college fraternity. Similarly,
idea – not the idea itself."). "Ideas are free to the world, and    "[e]lements such as drunks, prostitutes, vermin and derelict
one person's idea can be appropriated by another with               cars would appear in any realistic work about . . . policemen
impunity." Taylor v. Metro-Goldwyn-Mayer Studios, 115 F.            in the South Bronx," and therefore are not afforded copyright
Supp. 156, 157 (S.D. Cal. 1953). "[N]o author may copyright         protection. Walker v. Time Life Films, 784 F.2d 44, 50 (2d
facts or ideas. The copyright is limited to those aspects of the    Cir. 1986); see also Murray Hill Publ'ns, Inc, 361 F.3d at
work – termed "expression" – that display the stamp of the          319-20 (citing examples).
author's originality." Feist Publ'ns, 499 U.S. at 350, 111 S.
Ct. at 1290 (quoting Harper & Row, Publishers, Inc. v.                 Stromback relies upon numerous examples to support his
Nation Enters., 471 U.S. 539, 547, 105 S. Ct. 2218, 2224            claim of substantial similarity between the works. As
(1985)) (internal quotation marks omitted). The abstraction         Stromback concedes, however, many of these elements are
test articulated by Judge Learned Hand in Nichols v.                superficial, e.g., the Hell/dungeon setting, the sequence of
Universal Pictures Corp., 45 F.2d 119 (1930), provides some         certain events (main characters leaving Hell, battling their
guidance in divining protected expression:                          brother, the attempted killing of the main character), racial
                                                                    allusions and a love interest. These are common themes and
  Upon any work, and especially upon a play, a great                ideas throughout literature and are beyond any level of
  number of patterns of increasing generality will fit              abstraction at which copyright protection might begin to
  equally well, as more and more of the incident is left out.       attach. See Cavalier v. Random House, Inc., 297 F.3d 815,
  The last may perhaps be no more than the most general             823 (9th Cir. 2002) ("Familiar stock scenes and themes that
  statement of what the play is about, and at times might           are staples of literature are not protected."). The same is true
  consist only of its title; but there is a point in this series    for character traits or descriptions such as "whacked," "odd,"
  of abstractions where they are no longer protected, since         "misfit," "evil," or "conflicted"; themes, such as saving the
  otherwise the playwright could prevent the use of his             world, the battle between good and evil, sibling rivalry or
  "ideas," to which, apart from their expression, his               familial secrets and issues, and racial issues; scenes, such as
  property is never extended.                                       parties; concepts, such as a dam or barrier between Earth and
                                                                    Hell; and plots, such as foiling the antagonist's attempt to rule
Id. at 121. The test itself does not identify protectible           the world. See generally Nichols, 45 F.2d at 122 ("A comedy
elements of a work, but instead is a tool for accomplishing         based upon conflicts between Irish and Jews, into which the
that task. Kohus, 328 F.3d at 855.                                  marriage of their children enters, is no more susceptible of
                                                                    copyright than the outline of Romeo and Juliet."); Whitehead
   Second, the principle of scenes a faire excludes copyright       v. Paramount Pictures Corp., 53 F. Supp. 2d 38, 49 (D.D.C.
protection for "incidents, characters or settings which are as      1999) ("The general concept of an interracial relationship . . .
a practical matter indispensable, or at least standard, in the      is not copyrightable.") (citing Matthews v. Freedman, 157
treatment of a given topic." Atari, Inc. v. N. Am. Philips          F.3d 25, 27 (1st Cir. 1998)). These elements are too general
Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982);           to qualify for copyright protection.
see also 4 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright ("Nimmer") § 13.03[F][3] (2004). For example,
Nos. 02-2387/2388                     Stromback v. New      17    18       Stromback v. New                          Nos. 02-2387/2388
                                     Line Cinema, et al.                   Line Cinema, et al.

  2.   Comparing the Works                                        ordinary lay observer would find them substantially similar to
                                                                  one another. See, e.g., Ellis, 177 F.3d at 506 n.2.
   After filtering out the unprotectible elements such as ideas
and scenes a faire, the final step is to determine whether the      Having reviewed "The Keeper" poem and screenplay and
allegedly infringing work is "substantially similar" by           "Little Nicky," we are unable to find any similarity between
comparing the two works. Wickham, 739 F.2d at 1097.               the works other than at perhaps the most superficial level.
Substantial similarity exists where "the accused work is so       Casting aside the many stock themes, scenes a faire, and raw
similar to the plaintiff's work that an ordinary reasonable       ideas cited by Stromback, we are left with two works that are
person would conclude that the defendant unlawfully               completely dissimilar in both their overall look and feel and
appropriated the plaintiff's protectible expression by taking     in their constituent expressive elements.
material of substance and value." Country Kids 'N City
Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288 (10th Cir. 1996)           The respective themes, plots, moods, and settings of the
(internal quotation marks and citation omitted). In Murray        works are dissimilar. "The Keeper" is a dark, disturbing, and
Hill we wrote:                                                    humorless story about real people. Its theme is difficult to
                                                                  discern, but it appears to be that power and success in life can
  "A story has a linear dimension: it begins, continues, and      be attained through rhyming. The story takes place in
  ends. If a defendant copies substantial portions of a           California, and much of it occurs in the basement of the
  plaintiff's sequence of events, he does not escape              national paper where Ted works. While at the national paper
  infringement by adding original episodes somewhere              Ted is attracted to a woman, Sue, who spurns him because he
  along the line." "The misappropriation of even a small          is "weird." Ted dislikes the corrupt Governor and at some
  portion of a copyrighted work may constitute an                 point figures out that the Governor was connected with a cult
  infringement under certain circumstances." "Even if a           of devil worshipers and had something to do with a murder.
  copied portion be relatively small in proportion to the         In an effort to bring down the Governor, Ted sends a series of
  entire work, if qualitatively important, the finder of fact     rhyming clues to the national paper that ultimately reveal the
  may properly find substantial similarity." "No plagiarist       Governor's connection to the murder.6 Ted refers to the
  can excuse the wrong by showing how much of his work            Governor as "evil" and "the antichrist" several times
  he did not pirate."                                             throughout the story, but this is only his use of a metaphor, as
                                                                  there is never any suggestion that Governor John actually is
361 F.3d at 320 (citations omitted). In a case such as this, it   the devil. The Governor eventually figures out that Ted is the
is appropriate to examine the theme, characters, plot,            "rhyming dude" and sends henchmen to kill Ted. Ted betrays
sequence, pace, and setting for similarities. Williams v.         his friend, Scott, by leading a henchman to believe that Scott
Crichton, 84 F.3d 581, 588 (2d Cir. 1996). "However,
'random similarities scattered throughout the works' may be
discounted." Murray Hill Publ'ns, Inc., 361 F.3d at 320                6
                                                                        The district court and the parties state that the Governor was
(quoting Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th        respo nsible for the murder, but the text of "The K eeper" suggests that the
Cir. 1984)). In the end, the question is whether, based upon      Governor's father committed the murder ("Well the big d eal is that a
his "net impression" of the works' expressive elements, the       prim e suspect in the ca se was the secretary of the state. . . . W ell, the
                                                                  secretary of states [sic] kid is now the governor. The one that will be the
                                                                  next president."). (J.A. at 334-35.)
Nos. 02-2387/2388                      Stromback v. New       19    20    Stromback v. New                      Nos. 02-2387/2388
                                      Line Cinema, et al.                 Line Cinema, et al.

is Ted. After the henchman shoots Scott, Ted reveals to Scott          The list of similarities cited by Stromback is extensive, but
that he used Scott as his "ladder." In the end, Ted becomes         nonetheless insufficient to render the two works substantially
Governor and uses his power to exact revenge on Sue by              similar. Some of the alleged similarities do not exist, others
raping her.                                                         are overstated, and, to the extent there are similarities, they
                                                                    are simply too general or tenuous to meet the legal standard
  In contrast, "Little Nicky" is a comedy about the devil and       for similarity. By way of example, Stromback says that Ted
his three sons. The predominant theme in "Little Nicky" is          is shown as a riddler and a punner and claims that the same
that good should and will prevail over evil. The story takes        "wordplay" occurs in Nicky's character development, but this
place in Hell, New York City, and Heaven. Little Nicky, the         is simply not true. Unlike Ted, Nicky does not speak in
youngest of the three sons, is sent to Earth to bring back his      rhymes or use wordplay. Likewise, Stromback claims that
two brothers, Casius and Adrian, who have escaped from Hell         Ted and Nicky both assume the same burden – saving the
as part of their plan to assume control. Nicky must bring his       world and souls. But, a fair read of "The Keeper" shows that
brothers back to Hell in order to restore the balance of good       Ted's true concern is his own self-interest. While there are
and evil and to save his father, Satan. On Earth, Nicky meets       some similarities – for example, references to Hell and the
and falls in love with Valerie. After dying and returning to        devil and interracial families – Stromback's claim fails
Hell several times, Nicky ends up in Heaven and discovers           because the similar details are trivial or scattered details. See
that his mother is an angel. Just as Adrian is about to prevail     Williams, 84 F.3d at 590-91. "Where as here, the slight
and claim all of the souls of New York City, Nicky returns to       similarities are not thematically related, the whole is no
Earth and, using the magic sphere his mother gave him,              greater than the sum of the parts." Murray Hill Publ'ns, Inc.,
bottles Adrian in the magic flask. After Nicky returns his          361 F.3d at 325. Thus, the district court was correct in
brothers to Hell, Satan sends Nicky back to Earth, and Nicky        concluding that a reasonable person could not conclude that
and Valerie have a son and live happily ever after.                 NLC copied protected expression from "The Keeper."
  The main characters, Ted and Nicky, are markedly                    In spite of the absence of similar protectible elements in
different. Ted is portrayed as a slick and scheming character       both works, Stromback contends that NLC's admission of
whose most prominent trait is that he speaks in rhymes, often       access precludes a finding of no substantial similarity as a
as a means to deceive and lure women. For example, in one           matter of law. This argument is easily rejected, because
scene, Ted tells a waitress that he would like her "ass," but       without substantial similarity, there can be no inference of
when she responds in apparent disgust he says "I would like         copying, and thus, no infringement. In Wickham v. Knoxville
your bass, bass ale." Ted reveals his evil side at the end of the   International Energy Exposition, Inc., 739 F.2d 1094 (6th Cir.
story by betraying his friend and raping the woman who              1984), we held that because there was no substantial
rejected him. In contrast, as a son of the devil, Nicky is          similarity, access was irrelevant: "No amount of proof of
unexpectedly portrayed as sweet, good-hearted, and naive.           access will suffice to show copying if there are no
Nicky succeeds in the end by using his inner good and               similarities." Id. at 1097; accord Arnstein v. Porter, 154 F.2d
ultimately saves the world by restoring the balance of good         464, 469 (2d Cir.1946) ("Of course, if there are no
and evil.                                                           similarities, no amount of evidence of access will suffice to
                                                                    prove copying.").
Nos. 02-2387/2388                    Stromback v. New       21    22   Stromback v. New                     Nos. 02-2387/2388
                                    Line Cinema, et al.                Line Cinema, et al.

   Finally, Stromback contends that the district court erred in   Stromback only alleged that the movie "Little Nicky"
granting summary judgment to NLC because it should have           infringed "The Keeper" poem and screenplay.
allowed discovery on the underlying and prior versions of the
screenplay in order to permit Stromback to fully develop his      C. Lanham Act Claim
claim. Stromback points out that he alleged not only that the
movie "Little Nicky" infringed his copyright in "The Keeper,"        Stromback also contends that the district court erred in
but also that NLC substantially copied and prepared versions      granting summary judgment on his claim for reverse passing
of "The Keeper." Stromback contends that discovery was            off under Section 43 of the Lanham Act. Where a plaintiff's
necessary to this portion of his claim and was relevant to        Lanham Act claim parallels his copyright infringement claim,
address the question of how the movie "Little Nicky" was          a finding of no substantial similarity on the copyright claim
prepared in light of NLC's election not to rely upon              precludes the Lanham Act claim. Mihalek Corp. v. Michigan,
independent creation as a defense. The district court rejected    814 F.2d 290, 296 (6th Cir. 1987); see also Litchfield v.
Stromback's request because only the movie was published to       Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984) (stating that
the public and because Stromback alleged in his amended           "without substantial similarity there can be no claim for
complaint only that the movie was an infringing work. We          reverse passing off" under the Lanham Act). Stromback
think that this was the correct result.           In deciding     makes no attempt to distinguish his Lanham Act claim from
infringement claims, courts have held that only the version of    his copyright infringement claim or to explain how there
the alleged infringing work presented to the public should be     could be a likelihood of confusion when the two works are
considered. See Davis v. United Artists, Inc., 547 F. Supp.       not substantially similar. Therefore, summary judgment was
722, 724 n.9 (S.D.N.Y. 1982) ("Since the ultimate test of         proper.
infringement must be the film as produced and broadcast, we
do not consider the preliminary scripts."). "Courts have          D. State Law Claims
routinely rejected requests to consider earlier drafts of the
screenplay. Consideration of earlier versions of the                The district court concluded that NLC was entitled to
screenplay is too unreliable in determining substantial           summary judgment on all of Stromback's state law claims on
similarity." Walker v. Time Life Films, Inc., 615 F. Supp.        the ground that they were subject to copyright preemption.
430, 435 (S.D.N.Y. 1985); see also Madrid v. Chronicle            On appeal, Stromback takes issue only with the district court's
Books, 209 F. Supp. 2d 1227, 1234 (D. Wyo. 2002) (quoting         dismissal of his claims for commercial misappropriation,
Walker and refusing to grant the plaintiff's request for          misappropriation of trade secrets, and interference with
discovery on the development of the defendant's movie             prospective economic advantage claims.
because such discovery would be "pointless"). As the Madrid         Section 301 of the Copyright Act provides that:
court noted, the "intermediate copying" concept has only been
recognized in a very limited application to cases involving            On and after January 1, 1978, all legal or equitable
computer programs – because of the complex nature of the            rights that are equivalent to any of the exclusive rights
subject. Id. at 1236. Because this is not such a case, there is     within the general scope of copyright as defined by
no need to apply the concept. Furthermore, in spite of              section 106 in works of authorship that are fixed in a
Stromback's assertion to the contrary, the district court's         tangible medium of expression and come within the
assessment of the amended complaint was accurate because
Nos. 02-2387/2388                     Stromback v. New       23   24     Stromback v. New                     Nos. 02-2387/2388
                                     Line Cinema, et al.                 Line Cinema, et al.

  subject matter of copyright . . . are governed exclusively      preemption on this basis because it relates to "the time, effort,
  by this title. Thereafter, no person is entitled to any such    and money that [Stromback] expended" as well as NLC's
  right or equivalent right in any such work under the            unauthorized "uses" of Stromback's efforts. (Appellant's Br.
  common law or statutes of any State.                            at 55-56.) This argument ignores the principle cited above,
                                                                  that the subject matter of copyright is broader than its
17 U.S.C. § 310(a). A state law claim will be preempted           protections. Thus, Stromback's citation to Feist Publications,
under Section 301 where two requirements are met. First, the      Inc. v. Rural Telephone Service Co., 499 U.S. 338, 111 S. Ct.
work must come within the scope of the "subject matter of         1282 (1991), for the proposition that there is no copyright
copyright" as set forth in Sections 102 and 103 of the            protection for "sweat of the brow" efforts is not germane to
Copyright Act. Wrench LLC v. Taco Bell Corp., 256 F.3d            the subject matter inquiry. Moreover, even assuming that
446, 453 (6th Cir. 2001). Second, the rights granted under        Stromback's time, effort, and money constitute a separate
state law must be equivalent to any of the exclusive rights       element of his claim, it would still be within the subject
within the scope of federal copyright protection. Id. These       matter of copyright because the claim is based upon NLC's
requirements are often referred to as the "subject matter         unauthorized use of "The Keeper" poem and screenplay. Cf.
requirement" and the "general scope" or "equivalency"             Nat'l Basketball Ass'n, 105 F.3d at 848 ("We hold that where
requirement. Id. (citing Nat'l Basketball Ass'n v. Motorola,      the challenged copying relates in part to the copyrighted
Inc., 105 F.3d 841, 848 (2d Cir. 1997)).                          broadcasts of the games, the subject matter requirement is met
                                                                  as to both the broadcasts and games."). Moreover,
  1.   Subject Matter Requirement                                 Stromback's argument that Section 106 of the Copyright Act
                                                                  does not grant a copyright owner the exclusive right to "use"
   The subject matter requirement of Section 301 is satisfied     a work is sophistry. See Alcatel USA, Inc. v. DGI Techs.,
if a work fits within the general subject matter of Sections      Inc., 166 F.3d 772, 787 (5th Cir. 1999) ("Use of a copyrighted
102 and 103 of the Copyright Act, regardless of whether it        work by one who does not own the copyright constitutes
qualifies for copyright protection. Baltimore Orioles, Inc. v.    infringement under federal law, provided the use falls within
Major League Baseball Players Ass'n, 805 F.2d 663, 676 (7th       the scope of a copyright owner's exclusive rights.") (footnote
Cir. 1986) (quoting H.R. Rep. No. 94-1476, at 131, reprinted      omitted).
in 1976 U.S.C.C.A.N. 5659, 5747). In Wrench, this court
joined several other circuits in holding that for purposes of       2.    Equivalency Requirement
preemption, the scope of the Copyright Act's subject matter
is broader than the scope of its protection. Wrench, 256 F.3d        Courts analyze equivalency by applying "a functional test"
at 454-55. Stromback's claims meet the subject matter             to determine whether the state law right at issue is equivalent
requirement because "The Keeper" poem and screenplay fall         to any of the exclusive rights under Section 106 of the
squarely within the range of materials protected by the           Copyright Act. Data Gen. Corp. v. Grumman Sys. Support
Copyright Act; that is, they are both original literary works     Corp., 36 F.3d 1147, 1164 (1st Cir. 1994). In Wrench, we
"fixed in [a] tangible medium of expression." 17 U.S.C.           stated:
§ 102(a). Stromback does not dispute that the poem and
screenplay meet the subject matter requirement, but he does          Equivalency exists if the right defined by state law
argue that his commercial misappropriation claim avoids             may be abridged by an act which in and of itself would
Nos. 02-2387/2388                      Stromback v. New       25   26    Stromback v. New                     Nos. 02-2387/2388
                                      Line Cinema, et al.                Line Cinema, et al.

  infringe one of the exclusive rights. Conversely, if an          under the Copyright Act); Artie Fields Prods., Inc. v. Channel
  extra element is required instead of or in addition to the       7 of Detroit, Inc., No. 94-CV-70730-DT, 1994 WL 559331,
  acts of reproduction, performance, distribution or display       at *2-3 (E.D. Mich. June 10, 1994) (holding that the plaintiff's
  in order to constitute a state-created cause of action, there    misappropriation and unfair competition claims grounded
  is no preemption, provided that the extra element                solely in the copying of the plaintiff's protected expression
  changes the nature of the action so that it is qualitatively     were preempted); 1 Nimmer § 1.01[B][1][f][iii] ("Except for
  different from a copyright infringement claim.                   a few stray rulings, legions of cases . . . have held preempted
                                                                   claims for misappropriation") (citations omitted). Of course,
256 F.3d at 456 (citation omitted). See also Summit Mach.          a misappropriation claim will survive preemption if it alleges
Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1440        an extra element, such as a confidential or fiduciary
(9th Cir. 1993). The existence of an extra element precludes       relationship. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982
preemption only where the element changes the nature, rather       F.2d 693, 717 (2d Cir. 1992). However, Stromback's
than the scope, of the action. Data Gen., 36 F.3d at 1164-65.      assertion that his claim is based upon the time, effort, and
                                                                   money that he expended in developing the screenplay is not
    a.   Commercial Misappropriation                               an extra element that saves his claim from preemption. See
                                                                   Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973,
   Stromback alleges in his commercial misappropriation            976-77 (9th Cir. 1987) (finding the plaintiff's
claim that Stromback "expended significant time, effort, and       misappropriation claim preempted because the "[e]ffort
money" to create "The Keeper" screenplay with "the                 expended to create a Tentative Map and supporting
expectation that he would reap the benefits of the production      documents is effort expended to create tangible works of
of the screenplay into a film for commercial sale" and that        authorship" and "[a]s such, this effort is within the scope of
NLC misappropriated the poem and screenplay, including its         copyright protection"); Mayer v. Josiah Wedgwood & Sons,
characters, scenes and events and will reap the benefits that      Ltd., 601 F. Supp. 1523, 1535 (S.D.N.Y. 1985) (rejecting as
Stromback was expecting. (1st Am. Compl. ¶¶ 48-49, J.A. at         preempted the plaintiff's unfair competition/misappropriation
242.) The essence of this claim is that NLC copied portions        claim alleging misappropriation of the plaintiff's time, effort,
of "The Keeper" poem and screenplay. Courts faced with             and talent). Therefore, this claim is preempted.
similar misappropriation claims have held them to be
preempted by the Copyright Act because they allege an act               b. Misappropriation of Trade Secrets
that infringes upon one of the exclusive rights set forth in
Section 106. See, e.g., Daboub v. Gibbons, 42 F.3d 285, 289          Count VI of Stromback's first amended complaint alleged
(5th Cir. 1995) (concluding that the plaintiffs' claims,           a claim for misappropriation of trade secrets under the
including misappropriation, were preempted because they            Michigan Uniform Trade Secrets Act ("MUTSA"), M.C.L.
merely alleged wrongful copying, distribution and                  §§ 445.1901-.1910, and under Michigan and California
performance of lyrics without alleging an extra element
rendering the claim different from a copyright infringement
claim); Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir. 1985)
(finding "no distinction" between the state law right asserted
in the misappropriation claim and the exclusive rights granted
Nos. 02-2387/2388                              Stromback v. New            27     28    Stromback v. New                     Nos. 02-2387/2388
                                              Line Cinema, et al.                       Line Cinema, et al.

common law.7 Under Michigan law, the elements of a                                International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992),
common law claim for misappropriation of trade secrets are:                       the Second Circuit stated:
(1) the existence of a trade secret; (2) the defendant's
acquisition of the trade secret in confidence; and (3) the                          [M]any state law rights that can arise in connection with
defendant's unauthorized use of it. Aerospace Am., Inc. v.                          instances of copyright infringement satisfy the extra
Abatement Techs., Inc., 738 F. Supp. 1061, 1069 (E.D. Mich.                         element test, and thus are not preempted by section 301.
1990) (citing Kearns v. Ford Motor Co., 203 U.S.P.Q. 884,                           These include unfair competition claims based upon
888 (E.D. Mich. 1978)). MUTSA displaces common law                                  breaches of confidential relationships, breaches of
trade secret misappropriation claims arising after October 1,                       fiduciary duties and trade secrets.
1998 – the effective date of MUTSA. M.C.L. § 445.1910.
Stromback alleged in his complaint that "Defendants had a                              ....
duty not to disclose or exploit confidential information
acquired from [Stromback]"; that "Defendants were aware                               Trade secret claims often are grounded upon a
that the information obtained by [sic] Stromback was                                defendant's breach of a duty of trust or confidence to the
confidential information and/or trade secrets"; that                                plaintiff through improper disclosure of confidential
"Defendants disclosed and exploited the confidential                                material. The defendant's breach of duty is the gravamen
information they received from [Stromback], without                                 of such trade secret claims, and supplies the "extra
Stromback's permission"; and that Stromback has been                                element" that qualitatively distinguishes such trade secret
damaged as a result of "[Defendants'] breaches of their duty                        causes of action from claims for copyright infringement
of confidentiality." (1st Am. Compl. ¶¶ 64-67, J.A. at 246.)                        that are based solely upon copying.

  In concluding that the misappropriation of trade secrets                        Id. at 717 (citations omitted). See also Dun & Bradstreet
claim was preempted, the district court lumped it together                        Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197,
with Stromback's commercial misappropriation claim, stating                       218 (3d Cir. 2002) ("We agree with Geac that if their
that it was "substantively no different than [the] commercial                     misappropriation of trade secrets claim was based on such
misappropriation claim." In doing so, however, the district                       breach of duty of trust and confidentiality, it would survive
court failed to recognize that a considerable number of cases                     preemption in this case."); Ez-Tixz, Inc. v. Hit-Tix, Inc., 919
have held that misappropriation of trade secrets claims are not                   F. Supp. 728, 737-38 (S.D.N.Y. 1996) (holding that because
preempted because they require proof of a confidential                            "plaintiff's claim for trade secret misappropriation require[d]
relationship, which provides the extra element required to                        proof of a breach of confidence, it [was] not preempted by
survive preemption. For example, in Computer Associates                           federal law"); 1 Nimmer § 1.01[B][1][h] ("Actions for
                                                                                  disclosure and exploitation of trade secrets require a status of
                                                                                  secrecy, not required for copyright, and hence, are not
                                                                                  preempted.") (footnotes omitted). Several courts have held
    7
                                                                                  that claims brought under state trade secret statutes modeled
       The district court did not decide whether Michigan or California law       on the Uniform Trade Secrets Act, such as MUTSA, survive
applies to this claim , and it appears that the parties did not raise the issue   preemption because the required proof of the existence and
in their briefing. We find it unnecessary to address the choice of law issue      breach of a confidential relationship provides the extra
at this point.
Nos. 02-2387/2388                    Stromback v. New       29    30       Stromback v. New                           Nos. 02-2387/2388
                                    Line Cinema, et al.                    Line Cinema, et al.

element necessary to survive preemption. See Data Gen.            analysis.8 In Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d
Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1165           655 (4th Cir. 1993), the Fourth Circuit stated that in
(1st Cir. 1994) (holding that a claim under Massachusetts         determining equivalency, a court should compare "the
trade secret law was not preempted "because participation in      elements of the causes of action . . ., not the facts pled to
the breach of a duty of confidentiality – an element that forms   prove them." Id. at 659. See also Gates Rubber Co., 9 F.3d
no part of a copyright infringement claim – represents unfair     at 847 (examining elements of the state cause of action for
competitive conduct qualitatively different from mere             misappropriation of trade secrets to determine whether the
unauthorized copying"); Trandes Corp. v. Guy F. Atkinson          extra element requirement was met); Harolds Stores, Inc. v.
Co., 996 F.2d 655, 660 (4th Cir. 1993) (holding that a claim      Dillard Dep't Stores, Inc., 82 F.3d 1533, 1543 (10th Cir.
under the Maryland Uniform Trade Secrets Act was not              1996) (following Trandes Corp.). We believe that Trandes
preempted because it "require[d] proof of a breach of trust or    Corp. provides an accurate statement of the law generally,
confidence"); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081,        where the state law claim itself furnishes the extra element
1090 n.13 (9th Cir. 1989) (noting that a claim under the          needed to avoid equivalency. In this case, for example, the
California Uniform Trade Secrets Act would not involve a          district court could have determined the preemption issue
legal or equitable right equivalent to an exclusive right of a    solely by examining the elements for a trade secrets
copyright owner under the Copyright Act); Gates Rubber Co.        misappropriation claim under Michigan law. Because a
v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847-48 (10th Cir.        plaintiff alleging such a claim must prove the existence and
1993) ("Because Gates' claim for trade secret                     breach of a confidential relationship, the claim itself is not
misappropriation under the Colorado Uniform Trade Secrets         preempted. Whether the plaintiff has actually alleged the
Act requires proof of a breach of trust or confidence – proof     proper elements of the claim goes to the question of whether
that is not required under the Copyright Act – Gates' state law   the claim could survive a Rule 12(b)(6) motion to dismiss, not
claims are not preempted by federal law."); Bateman v.            whether the claim is preempted. See Firoozye v. Earthlink
Mnemonics, Inc., 79 F.3d 1532, 1549 (11th Cir. 1996)              Network, 153 F. Supp. 2d 1115, 1131 (N.D. Cal. 2001) ("The
(expressing "no doubt that the Florida trade secret statute at    defendants' contention that the plaintiff has failed to allege a
issue satisfies the 'extra element' test generally employed by    confidential relationship and their citation to Design Art
courts in performing copyright preemption analysis").             address the merits of the plaintiff's trade secret claim, not
Because proof of a confidential relationship is a necessary       whether that claim is preempted by the Copyright Act.").
element in a trade secret misappropriation claim under both
the common law and uniform trade secrets laws such as
MUTSA, we hold that Stromback's trade secrets                          8
                                                                        NLC contends that because Stromback did not argue to the district
misappropriation claim is not preempted by Section 301;           court that there was a fiduciary relationship with NLC, the argument
proof of a confidential relationship and its breach provide an    should be preclud ed on app eal. W hile we will generally decline to
extra element.                                                    consider on appeal issues not considered by the district court, we do
                                                                  recognize an exception where the issue presents only a question of law.
  In noting that Stromback did not argue that there was an        United Food & C om mercial W orkers Un ion, Local 1099 v. Sou thwest
extra element, such as a fiduciary relationship, the district     Oh io Reg 'l Transit Auth., 163 F.3d 34 1, 360 n.9 (6th Cir. 1998) (quoting
                                                                  City Mg m't Corp. v. U.S. Chem. Co., 43 F.3d 244 , 255 (6th Cir. 1994)).
court failed to undertake the proper inquiry in an equivalency    Here we address the issue of a confidential relationship as part of our legal
                                                                  analysis.
Nos. 02-2387/2388                     Stromback v. New       31    32   Stromback v. New                      Nos. 02-2387/2388
                                     Line Cinema, et al.                Line Cinema, et al.

Nonetheless, a court may be required to review the facts as        contract allegations to determine whether the promise was a
pled by the plaintiff in order to determine whether the acts       "promise to pay for the use of the work," which would not
giving rise to the state law claim are merely acts of copyright    have been preempted, or merely "a promise to refrain from
infringement. See Sturdza, 281 F.3d at 1304 ("To determine         reproducing, performing, distributing or displaying the work,"
whether a state law claim is qualitatively different from a        which would have been preempted. Wrench, 256 F.3d at 457.
copyright claim – that is, whether the state claim has an 'extra   Similarly, in Murray Hill Publications, Inc. v. ABC
element' – courts generally examine both the elements of the       Communications, Inc., 264 F.3d 622 (6th Cir. 2001), we set
state law cause of action and the way the plaintiff has actually   forth the law in Michigan regarding conversion and then
pled that cause of action."). For example, a conversion claim      determined from the plaintiffs' allegations that the claim was
will usually survive preemption because the tort relates to the    preempted because it met the equivalency requirement. Id. at
unauthorized exercise of dominion and control, or                  636-37.
interference with, another's personal property. See, e.g.,
Carson v. Dynegy, Inc., 344 F.3d 446, 456-57 (5th Cir. 2003)         Although the district court incorrectly determined that the
(holding that conversion claim under Texas law survived            misappropriation of trade secrets claim was preempted, this
preemption); United States ex rel. Berge v. Bd. of Trustees of     panel may affirm if the decision was correct for any reason,
the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997) ("It is     including one the district court did not consider. United
hornbook law that a state law action for conversion will not       States Postal Serv. v. Nat'l Ass'n of Letter Carriers, 330 F.3d
be preempted if the plaintiff can prove the extra element that     747, 750 (6th Cir. 2003). We conclude that dismissal was
the defendant unlawfully retained the physical object              proper because, as a matter of law, "The Keeper" poem and
embodying its work.") (internal quotations and citations           screenplay were not trade secrets and, even if they were, there
omitted). Where the conversion claim involves intangible           was no misappropriation. In order to constitute a trade secret
property, a court should examine the plaintiff's allegations to    under MUTSA, information alleged to be a trade secret must
determine whether the state law right is equivalent to one of      "[d]erive independent economic value, actual or potential,
the exclusive rights under Section 106. See Daboub, 42 F.3d        from not being generally known to, and not being readily
at 289-90 (holding that the conversion claim was preempted         ascertainable by proper means by, other persons who can
where the plaintiffs alleged that the defendants improperly        obtain economic value from its disclosure or use." M.C.L.
copied, distributed, and performed their song); Berge, 104         § 445.1902(d)(i). Thus, the essence of a trade secret is that it
F.3d at 1463 (holding conversion claim preempted because           derives its value from secrecy. Here, Stromback could not
"what is crucial is that Berge makes no claim that appellants      possibly argue that his poem and screenplay had "independent
converted any tangible objects embodying her intellectual          economic value" because he kept them secret. Those works
property"). Likewise, a promise in a breach of contract claim      would have "independent economic value" only if they were
may suffice as an extra element, but this determination must       exploited publicly through broad dissemination. Furthermore,
be based upon a review of the plaintiff's allegations. Higher      even if Stromback's poem and screenplay had some
Gear Group, Inc. v. Rockenbach Chevrolet Sales, Inc., 223 F.       independent economic value from being held in secrecy,
Supp. 2d 953, 958 (N.D. Ill. 2002). We followed this               Stromback could not prove misappropriation. As set forth
approach in Wrench. Although we examined Michigan law              above, "The Keeper" poem and screenplay and "Little Nicky"
regarding contracts implied in fact and contracts implied in       are not at all similar. The only similarities arise from
law, it was necessary to also examine the plaintiffs' breach of    common and well-known themes, plots, and character traits
Nos. 02-2387/2388                     Stromback v. New       33    34   Stromback v. New                      Nos. 02-2387/2388
                                     Line Cinema, et al.                Line Cinema, et al.

that "are readily ascertainable by other means," id., and          rights protected by copyright"); Titan Sports, Inc. v. Turner
therefore cannot constitute trade secrets. Because we have         Broadcasting Sys., Inc., 981 F. Supp. 65, 74 (D. Conn. 1997)
concluded that the two works are not substantially similar, no     ("The right that Plaintiff's contracts with Hall and Nash seeks
reasonable juror could conclude that NLC misappropriated           to protect is Plaintiff's exclusive ownership right in its
any trade secrets from Stromback's works.                          copyrighted material – precisely what the Copyright Act
                                                                   seeks to protect."); Aqua Bay Concepts, Inc. v. Grosse Point
    c.   Interference with Prospective Economic Advantage          Bd. of Realtors, No. 91-CV-74819, 1992 WL 350275, at *4
                                                                   (E.D. Mich. May 7, 1992) ("There is no indication that the
  Stromback's final state law claim is a claim for interference    state allegation of contractual interference is 'qualitatively
with prospective economic advantage. The elements of the           different' from the copyright infringement claim.").
claim are: (1) the existence of a valid business relationship or   According to Professor Nimmer,
expectancy; (2) knowledge of the relationship or expectancy
by the defendant; (3) intentional interference by the defendant      Insofar as unauthorized reproduction, distribution,
which induces or causes a breach or termination of the               performance or display causes the plaintiff to lose the
relationship or expectancy; and (4) damage to the plaintiff.         benefits that would flow from an actual or prospective
BPS Clinical Labs. v. Blue Cross & Blue Shield of Mich., 217         contract whereby plaintiff would authorize any such acts,
Mich. App. 687, 698, 552 N.W.2d 919, 925 (1996) (per                 the rights created by the tort of contract interference do
curiam). Stromback's allegations in support of this claim are        not appear to differ qualitatively from rights under
that he "had a legitimate expectation of a future economic           copyright; copyright also contemplates loss of actual or
benefit from the development of his poetry and screenplay";          prospective contract benefits by reason of such
that NLC "knew that the use of [Stromback's] poem and                unauthorized acts. Pre-emption in this context would,
screenplay would interfere with [his] reputation and [its]           then, appear to be justified. The fact that the tort, unlike
development . . . within the film industry"; and that NLC's          copyright infringement, requires awareness of the
"actions in misappropriating the poem and screenplay                 conflicting contract and an intentional interference with
including the characters, character interplay, scenes and            it merely means that the state-created right is narrower
events . . . and passing them off as [its] own in the production     than its copyright counterpart, not that it is qualitatively
of 'Little Nicky' . . . were made with the intent that               different so as to preclude pre-emption.
[Stromback's] expected relationships would be disrupted."
(1st Am. Compl. ¶¶ 77-79, J.A. at 248.)                            1 Nimmer § 1.01[B][1][a] (footnotes omitted). See also
                                                                   Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
  Generally, tortious interference claims (with contract or        195, 201 (2d Cir. 1983), rev'd on other grounds, 471 U.S.
prospective economic advantage) are held to be preempted           539, 105 S. Ct. 2218 (1985) (finding the tortious interference
because the rights asserted in such claims are not qualitatively   claim preempted because unauthorized publication was the
different from the rights protected by copyright. See, e.g.,       basis for the violation and the elements of awareness and
Idema v. Dreamworks, Inc., 162 F. Supp. 2d 1129, 1193              intentional interference pled in the tortious interference claim
(C.D. Cal. 2001) (holding that the plaintiff's claim for           did not render the claim different from a copyright claim).
negligent interference with prospective economic advantage
did "not protect any right 'qualitatively different' from those
Nos. 02-2387/2388                     Stromback v. New       35
                                     Line Cinema, et al.

  Here, Stromback's tortious interference claim arises out of
NLC's alleged copying, display, and distribution of "The
Keeper" poem and screenplay – acts which also violate the
exclusive rights granted by Section 106. This claim is based
upon activity which constitutes copyright infringement and is
preempted because it is not "qualitatively different" from a
copyright infringement claim. We reject Stromback's
argument that the development of his reputation is an extra
element that somehow renders the claim different from a
copyright infringement claim. The bottom line is that the
foundation of Stromback's claim is NLC's violation of rights
that are granted under and protected by the Copyright Act.
                              III.
   For the foregoing reasons, the judgment of the district court
is AFFIRMED.
