                                                                            FILED
                            NOT FOR PUBLICATION                              JUL 15 2010

                                                                         MOLLY C. DWYER, CLERK
                     UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



DEBORAH NOVAK, JOHN WITEK,                        No. 08-56957
AND WITEK & NOVAK, INC.,
                                                  D.C. No. 2:07-cv-04000-
              Plaintiffs–Appellants,                       GAF-PLA

  v.
                                                  MEMORANDUM *
WARNER BROS PICTURES, LLC, et al.,

              Defendants–Appellees.



                    Appeal from the United States District Court
                       for the Central District of California
                     Gary A. Feess, District Judge, Presiding

                             Submitted March 4, 2010 **
                                Pasadena, California

Before: CANBY, GOULD and IKUTA, Circuit Judges.

       Deborah Novak, John Witek, and Witek & Novak, Inc., (collectively, the

“Producers”) hold the copyright in Ashes to Glory, a documentary film that

portrays the rebuilding of Marshall University’s football program after it lost all

        *
         This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
        **
          The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
but a handful of its players, coaches, and prominent supporters in a disastrous

plane crash in 1970. The Producers brought this action against Warner Brothers

Pictures and several related parties (collectively, “Warner Brothers”), alleging

copyright infringement, breach of contract, and unfair competition, all in

connection with the Warner Brothers’ subsequent production of the allegedly

infringing work, the dramatic film We Are Marshall. We Are Marshall is based on

the same historical facts as Ashes to Glory. The district court granted summary

judgment in favor of Warner Brothers on all claims. The Producers timely

appealed. We have jurisdiction pursuant to 28 U.S.C. § 1291. Upon de novo

review, see Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076

(9th Cir. 2006), we affirm.

      Proof of infringement in this case requires a fact-based showing that We Are

Marshall and Ashes to Glory are “substantially similar.” Three Boys Music Corp.

v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000) (quoting Smith v. Jackson, 84 F.3d

1213, 1218 (9th Cir. 1996)). The district court, for its part, conducted a

meticulous, almost frame-by-frame analysis of the two works and concluded that

the Producers had failed to raise a triable issue of substantial similarity. Having

reviewed the two works ourselves, we agree with the district court that the works

are not substantially similar.


                                           2
      It is true that the same historical facts underlie both productions, but

historical facts are not protected by copyright. See, e.g., Narell v. Freeman, 872

F.2d 907, 910-11 (9th Cir. 1989). The issue for purposes of summary judgment is

whether the Producers raised a triable issue of substantial similarity between We

Are Marshall and the protected expression in Ashes to Glory. That issue is

determined by applying an “extrinsic” test, which “focuses on ‘articulable

similarities between the plot, themes, dialogue, mood, setting, pace, characters, and

sequence of events’ in the two works.” Funky Films, 462 F.3d at 1077 (quoting

Kouf v. Walt Disney Pictures & Television, 16 F.3d 1042, 1045 (9th Cir. 1994)).

Except for matters of historical fact, these elements of the two works before us are

not substantially similar, as the district court explained in detail. Contrary to the

Producers’ claims, we conclude that the district court did compare the “actual

concrete elements” between the two works, rather than mere plot ideas. Narell,

872 F.2d at 912.

      The Producers contend that the district court imposed an improperly severe

standard of infringement when it quoted Narell for the proposition that “[h]istorical

facts and theories may be copied, as long as the defendant does not ‘bodily

appropriate’ the expression of the plaintiff.” Narell, 872 F.2d at 910–11 (quoting

Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 489 (9th Cir.


                                            3
1984)). But neither Narell nor the district court substituted a “bodily

appropriation” standard for the “substantial similarity” standard. See id. at 912–13.

Although allowances necessarily must be made for permissible similarity in

relating unprotected facts, see Landsberg, 736 F.2d at 488–89, the substantial

similarity standard of infringement has long been and remains the law of this

circuit. See, e.g., Funky Films, Inc., 462 F.3d at 1076–77. The district court

properly applied that standard in conducting its analysis.

      The Producers also rely on the fact that Warner Brothers had total access to

Ashes to Glory before producing We Are Marshall. The Producers rely on the

“inverse ratio” rule, which ostensibly lessens the quantum of proof required to

show copying when the plaintiff can show that the defendant had a “‘high degree

of access’” to the protected work. Three Boys Music Corp., 212 F.3d at 485

(quoting Smith, 84 F.3d at 1218). This proposition does not aid the Producers here,

however, because “[n]o amount of proof of access will suffice to show copying

if there are no similarities” between the protected expressions in the two works.

Funky Films, 462 F.3d at 1081 (citation and internal quotation marks omitted).

Even under a relaxed standard, the requisite similarities must be “concrete or

articulable” to satisfy the extrinsic test. Id. at 1081–82. In this case, the only

concrete or articulable similarities between Ashes to Glory and We Are Marshall


                                            4
consist of unprotectable scènes à faire, see Smith, 84 F.3d at 1216, and historical

facts, which, like all facts, whether “scientific, historical, biographical, [or] news of

the day[,] . . .‘ may not be copyrighted and are part of the public domain available

to every person.’” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,

347–48 (1991) (quoting Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1369

(5th Cir. 1981)). The Producers also argue that evidence of substantial similarity

can be shown in the same sequencing of events in the two films, especially in the

two works’ opening montages. Upon reviewing the films, we conclude that the

two films do not contain the same sequencing of events: even in the two films’

opening sequences, Ashes to Glory differs significantly from We Are Marshall by

including the film’s title and many additional shots of the town of Huntington and

the university campus. The Producers have failed to raise a triable issue of

substantial similarity, and the district court did not err in entering summary

judgment for Warner Brothers on the copyright infringement claim.

      The Producers next argue, on various grounds, that the district court

committed error in granting summary judgment for Warner Brothers on the breach-

of-contract claims. We have considered those arguments and find them meritless.

The evidence conclusively establishes that, when negotiations broke off, the parties

had not reached agreement on the purchase price. “‘The failure to reach a meeting


                                            5
of the minds on all material points prevents the formation of a contract even

though the parties have orally agreed upon some of the terms, or have taken some

action related to the contract.’” Bustamante v. Intuit, Inc., 45 Cal. Rptr. 3d 692,

704 (Cal. Ct. App. 2006) (quoting Banner Entm’t, Inc. v. Superior Court, 72

Cal. Rptr. 2d 598, 604 (Cal. Ct. App. 1998)) (brackets and emphasis omitted). No

rational jury could find that a contract was entered between the Producers and

Warner Brothers. Nor have the Producers produced evidence of disclosure of their

work under conditions that would permit a jury to find an implied contract under

the rule of Desny v. Wilder, 46 Cal. 2d 715, 738–39 (1956).1       Accordingly, the

judgment of the district court is

      AFFIRMED.




      1
         As the Producers recognize, their unfair competition claim depended on
their establishing their copyright or contract claims.

                                           6
