           RECOMMENDED FOR FULL-TEXT PUBLICATION
                Pursuant to Sixth Circuit Rule 206                         2    Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
        ELECTRONIC CITATION: 2004 FED App. 0082P (6th Cir.)                     Twentieth Century Fox Film
                    File Name: 04a0082p.06                                      Corp.

UNITED STATES COURT OF APPEALS                                                                 _________________

                  FOR THE SIXTH CIRCUIT                                                             COUNSEL
                    _________________
                                                                           ARGUED: Louis P. Petrich, LEOPOLD, PETRICH &
                                                                           SMITH, Los Angeles, California, for Appellant. Mayer
 MURRAY HILL PUBLICATIONS, X                                               Morganroth, MORGANROTH & MORGANROTH,
 INC.,                             -                                       Southfield Michigan, for Appellee. ON BRIEF: Louis P.
             Plaintiff-Appellee/ -                                         Petrich, LEOPOLD, PETRICH & SMITH, Los Angeles,
                                   -   Nos. 01-2668/2721                   California, Maria N. Bernier, Gregory B. Jordan, REED &
               Cross-Appellant, -
                                                                           SMITH, Pittsburgh, Pennsylvania, Laurie J. Michelson,
                                    >                                      BUTZEL LONG, Detroit, Michigan, J. Michael Huget,
                                   ,
            v.                     -                                       BUTZEL LONG, Ann Arbor, Michigan, for Appellant.
                                   -                                       Mayer Morganroth, Jeffrey B. Morganroth, Jason R. Hirsch,
 TWENTIETH CENTURY FOX             -                                       MORGANROTH & MORGANROTH, Southfield, Michigan,
 FILM CORPORATION ,                -                                       for Appellee.
          Defendant-Appellant/ -                                                               _________________
                Cross-Appellee. -
                                   -
                                  N                                                                OPINION
                                                                                               _________________
       Appeal from the United States District Court
    for the Eastern District of Michigan at Ann Arbor.                        BOGGS, Chief Judge. Twentieth Century Fox Film
   No. 97-60405—Marianne O. Battani, District Judge.                       Corporation (“Fox”) appeals following a jury verdict in favor
                                                                           of plaintiff, Murray Hill Publications, Inc. (“Murray Hill”), in
                     Argued: August 7, 2003                                its action for copyright infringement. During the creation of
                                                                           the movie “Jingle All The Way” (“JATW”), Fox received
              Decided and Filed: March 19, 2004                            from Murray Hill a submission of the screenplay for “Could
                                                                           This Be Christmas” (“CTBC”). After the theatrical release of
 Before: BOGGS, Chief Judge; SILER, Circuit Judge; and                     JATW, Murray Hill sued Fox, alleging that the JATW movie
               RICE, District Judge.*                                      infringed upon its copyright of the CTBC screenplay. At
                                                                           trial, both Fox and Murray Hill presented expert evidence to
                                                                           establish whether the JATW movie was substantially similar
                                                                           to the CTBC screenplay. After the jury returned a verdict for
                                                                           Murray Hill, the district court disallowed damage items
    *                                                                      representing the bulk of the jury award and denied attorney’s
     The Honorable Walter Herbert Rice, United States District Judge for
the Southern District of Ohio, sitting by designation.
                                                                           fees to Murray Hill. On appeal, Fox argues that it was

                                   1
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.        3    4    Murray Hill Pub., Inc. v.           Nos. 01-2668/2721
                           Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                Corp.                   Corp.

entitled to summary judgment on the issue of substantial           then “So This Is Christmas,” and finally “Could This Be
similarity, that the trial was tainted by improper expert          Christmas.” Webster first registered this screenplay with the
testimony by Murray Hill’s expert witness and by misleading        Copyright Office in 1989 and re-registered it in 1991. From
jury instructions, necessitating a new trial, and that the         1989 through 1993, Webster and his agent made repeated
damages awarded were unsupported in law or fact. Murray            attempts to sell this screenplay to a variety of potential
Hill cross-appealed and argues that it was entitled to the full    producers. While Murray Hill pleaded a number of theories
damages awarded by the jury and also to attorney’s fees. We        on how the screenplay could have found its way to Fox
reverse because Fox was entitled to judgment as a matter of        during this period, the district court considered all of the
law. We do not reach the issues of the expert evidence, the        theories too speculative and found that Fox did not have
jury instructions, the attorney’s fees, or the damages.            access to the CTBC screenplay during this period. Murray
                                                                   Hill does not raise this issue on appeal. Significantly, on
                               I                                   February 4, 1994, Webster sold an option to CTBC to Murray
                                                                   Hill and eventually transferred all rights in CTBC to Murray
   The principal author of the JATW screenplay was Randy           Hill. On June 21, Murray Hill submitted CTBC to the Family
Kornfield, a Fox script reader and freelance writer of             Film division of Fox. On July 9, the CTBC screenplay was
screenplays. In 1993, Kornfield tried to buy a Mighty              read and summarized by Rudy Romero, another Fox script
Morphin’ Power Ranger action figure as a birthday present          reader and friend of Kornfield’s. Romero was also the script
for his son. The difficulties he encountered in this pursuit and   reader who a few months later performed the same task for
conversations with other parents similarly engaged gave            the JATW screenplay. On August 1, Fox declined the CTBC
Kornfield the idea for a screenplay. On January 11, 1994,          screenplay. After Fox declined the screenplay, Murray Hill
Kornfield registered his “treatment,” a six-page summary of        made no further attempts to sell it.
a proposed screenplay, then called “A Christmas Hunt,” with
the Writer’s Guild of America. On July 17, he registered a            At some time in February 1996, Robert Laurel, the
fleshed-out screenplay of this treatment. Executives at the        principal of Murray Hill, read an article in Daily Variety
Fox Searchlight division liked the screenplay and bought it        about the JATW movie then in production. Concerned about
for “1492 Pictures,” a production company affiliated with          the apparent similarities between JATW and CTBC, Laurel
Fox. From November 1994 through June 1995, Kornfield               contacted his attorneys, who sent a series of cease-and-desist
worked with Fox and 1492 Pictures to revise the screenplay.        letters to Fox. Early settlement negotiations between Fox and
In November 1995, Fox hired two more scriptwriters to              Murray Hill failed over Murray Hill’s unwillingness to
continue editing and enhancing the screenplay. During this         commit to any particular theory of how and when Fox could
editorial process, the screenplay acquired the JATW title.         have obtained access to the CTBC screenplay and Fox’s
                                                                   refusal to share some of its information until Murray Hill
  The author of the CTBC screenplay was Brian Webster, a           committed to such a theory. Nevertheless, Fox proceeded
Detroit school teacher and aspiring script writer. In 1988,        with the JATW movie. On November 22, 1996, the movie
inspired by his difficulties in obtaining a Golden Batman as       was released and quickly proved to be a commercial success.
a Christmas present for his son, Webster wrote the first draft
of a screenplay, initially entitled “Action Man: The Toy,”
Nos. 01-2668/2721                Murray Hill Pub., Inc. v.            5    6    Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                               Twentieth Century Fox Film                       Twentieth Century Fox Film
                                                    Corp.                       Corp.

As of December 2000, the JATW movie had earned $183                        respect to all damage items except the producer’s and writer’s
million.                                                                   fees, thus reducing the award to $1.5 million. The court also
                                                                           declined to award attorney’s fees to Murray Hill and entered
   On December 3, 1997, Murray Hill filed suit against Fox in              judgment in the reduced amount. Before this court now are
the United States District Court for the Eastern District of               Fox’s timely appeal and Murray Hill’s timely cross-appeal.
Michigan. While this complaint alleged a multitude of
theories of liability, the only claim still relevant is Murray                                           II
Hill’s allegation that the JATW movie infringed upon the
copyright of the CTBC screenplay. The court made a finding                    To determine whether the district court erred in allowing
that Murray Hill failed to establish directly that Fox had                 this case to go to the jury, we must look both at the
access to the CTBC screenplay at any time before Murray                    developing law of copyright as it addresses the elements of
Hill submitted it to Fox. The case then proceeded to trial by              proof for copyright infringement, and to the specific elements
jury. The district court instructed the jury based on the Ninth            of the two works before us. We will first lay out the
Circuit’s test for judging the “substantial similarity” of                 framework of law, as our circuit has pronounced it (Part III);
copyrighted works. As the jury was deliberating, the court                 then describe the dramatic elements of the two works (Part
found that the JATW treatment, created prior to the CTBC                   IV); and, finally, apply the law to an assessment of the
submission, did not infringe on the CTBC screenplay.1                      relation of the protectible elements of the copyrighted work
However, the jury was not informed of this ruling. Four days               to the overall tenor of the allegedly infringing work (Part V).
later, the jury rendered a verdict in favor of Murray Hill. The
damages included $1 million in producer’s fees and $500,000                                              III
in writer’s fees that Murray Hill lost because Fox did not
contract with it for these services, $2 million in lost goodwill,            Title 17 of the United States Code protects owners’
and $500,000 in merchandising revenue Fox earned from the                  copyrights in creative works. 17 U.S.C. §§ 101-1332.
sales of a JATW sound track and toys. While the jury found                 Copyright owners have the exclusive right to reproduce the
that JATW had not yet earned any profits for Fox, it estimated             protected work, to prepare derivative works, and to distribute
Fox’s future profits on JATW at $15 million and also                       copies to the public. 17 U.S.C. § 106(1)-(3). In the case of
awarded that amount to Murray Hill. Accordingly, the                       infringement, the owner of a copyrighted work may seek
district court entered judgment in favor of Murray Hill in the             injunctive relief, impoundment and disposition of the
sum of $19 million. Fox renewed its motion for judgment as                 infringing articles, damages, infringer’s profits, and legal
a matter of law and also moved for new trial. The court                    costs, including attorney’s fees. 17 U.S.C. §§ 502-505. “To
granted Fox’s motion for judgment as a matter of law with                  succeed in a copyright infringement action, a plaintiff must
                                                                           establish that he or she owns the copyrighted creation, and
                                                                           that the defendant copied it.” Kohus v. Mariol, 328 F.3d 848,
    1                                                                      853 (6th Cir. 2003); see also Feist v. Rural Tel. Serv. Co., 499
      The earlier finding did not preclude all possibility that the JATW   U.S. 340, 361 (1991). “However, in most cases courts have
treatment infringed , because Murray Hill had argued that the alleged      no objective evidence of the process by which the challenged
“striking similarity” between the CTBC screenplay and the JATW
treatment estab lished access inferentially.                               object was developed and thus are forced to rely on the
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.       7    8     Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                           Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                Corp.                   Corp.

inferences which may be drawn from two basic facts: access        520 (D.D.C. 1978), aff’d, 607 F.2d 494 (D.C. Cir. 1979)).
and similarity.” Glanzmann v. King, 8 U.S.P.Q.2d 1594,            “Nor is a ‘bare possibility’ of access sufficient. A plaintiff
1595 (E.D. Mich. 1988) (citing Ideal Toy Corp. v. Kenner          must establish that defendant(s) had a ‘reasonable possibility’
Prods., 443 F. Supp. 291 (S.D.N.Y. 1977)). “[W]here there         to view plaintiff’s work.” Glanzmann, 8 U.S.P.Q.2d at 1595
is no direct evidence of copying, a plaintiff may establish ‘an   (citing Meta-Film Assocs. v. MCA, Inc., 586 F. Supp. 1346,
inference of copying by showing (1) access to the                 1355 (C.D. Cal. 1984)). See also Grubb v. KMS Patriots,
allegedly-infringed work by the defendant(s) and (2) a            L.P., 88 F.3d 1, 4 (1st Cir. 1996) (denying copyright
substantial similarity between the two works at issue.’”          infringement claim on design of football team’s logo where
(emphases added). Kohus, 328 F.3d at 853-54 (quoting Ellis        alleged infringer had largely completed his design before
v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999)). “Thus, copying     access to plaintiff’s design).
is an essential element of infringement and substantial
similarity between the plaintiff’s and defendants’ works is an       Where the plaintiff cannot prove access, the copyright
essential element of copying.” Wickham v. Knoxville Int’l         infringement claim can still succeed, but only by proof of a
Energy Exposition, 739 F.2d 1094, 1097 (6th Cir. 1984)            higher level of similarity than the merely substantial. See
(citations omitted).                                              Ellis, 177 F.3d at 507 (noting that “[s]ome case law indicates
                                                                  that the stronger the similarity between the two works in
  The access element of a copyright infringement claim is         question, the less compelling the proof of access needs to be”
usually the less problematic. “Access is essentially ‘hearing     (citing Nimmer § 13.02[B])). The quantum of similarity that
or having a reasonable opportunity to hear the plaintiff[’s]      will substitute for proof of access is “striking similarity.”
work and thus having the opportunity to copy.’” Ellis, 177        Such striking similarity “preclude[s] the possibility of
F.3d at 506 (quoting Tree Publ’g Co. v. Warner Bros.              independent creation.” Glanzmann, 8 U.S.P.Q.2d at 1595
Records, 785 F. Supp. 1272, 1274 (M.D. Tenn. 1991)).              (citing Ferguson v. Nat’l Broad. Co., 584 F.2d 111 (5th Cir.
“Access is proven when the plaintiff shows that the defendant     1978)). Of course, even in a striking similarity case, “[a]bsent
had an opportunity to view or to copy plaintiff’s work.”          copying, there can be no infringement.” Mazer v. Stein, 347
Glanzmann, 8 U.S.P.Q.2d at 1595 (citing Sid & Marty Krofft        U.S. 201, 218 (1954). However, striking similarity carries the
Television Prods. v. McDonald’s Corp., 562 F.2d 1157, 1163        burdens of proof that the infringing work is sufficient similar
(9th Cir. 1977)). “Although ‘evidence that a third party with     as to intrude into the copyrighted work’s protection and that
whom both the plaintiff and defendant were concurrently           the defendant must have had access to the copyrighted work,
dealing had possession of plaintiff’s work is sufficient to       even if the plaintiff can provide no extrinsic proof of that fact.
establish access by the defendant,’ ‘[a]ccess may not be
inferred through mere speculation or conjecture.’” Ellis, 177        In the usual infringement case, access can be shown and the
F.3d at 506 (quoting 4 Melville B. Nimmer & David Nimmer,         more difficult proof is that of “substantial similarity.” In
Nimmer on Copyright § 13.02[A] (hereinafter “Nimmer”)).           order to focus this inquiry, “[c]ourts have established various
“A mere assertion of access, unsupported by probative             tests for the substantial similarity finding.” Kohus, 328 F.3d
evidence is inadequate.” Glanzmann, 8 U.S.P.Q.2d at 1595          at 854. “The traditional approach is the ‘ordinary observer’
(citing Scott v. Paramount Pictures Corp., 449 F. Supp. 518,      or ‘audience’ test, which ‘requires the trier of fact to gauge
                                                                  the similarities of the two works solely on the basis of his ‘net
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.       9    10    Murray Hill Pub., Inc. v.              Nos. 01-2668/2721
                           Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                Corp.                   Corp.

impression’ and without relying on expert analysis or             works. Kouf v. Walt Disney Pictures & Television, 16 F.3d
dissection.’” Ibid. (citing Ellis, 177 F.3d at 506 n.2).          1042, 1046 (9th Cir. 1994). “[S]atisfaction of the extrinsic
“[C]ourts have undertaken various modifications—typically,        test creates a triable issue of fact in a copyright action
by adding a prior step that does allow expert testimony and       involving a literary work.” Shaw, 919 F.2d at 1359.
analytic dissection.” Kohus, 328 F.3d at 854.
                                                                     This court, however, had until recently not adopted any of
   The Second Circuit has adopted a test that distinguishes       the refined versions of the substantial similarity test. Ellis,
between two essential elements in a substantial similarity        177 F.3d at 506 n.2. Lacking guidance, the district court in
suit–“(a) that defendant copied from plaintiff’s copyrighted      the present case adopted the Ninth Circuit test. However,
work and (b) that the copying (assuming it to be proved) went     while this appeal was pending, we, in Kohus, adopted the
so far as to constitute improper appropriation.” Arnstein v.      District of Columbia Circuit’s test. In this test “the first step
Porter, 154 F.2d 464, 468 (2d Cir. 1946). Expert testimony        ‘requires identifying which aspects of the artist’s work, if any,
is appropriate under the first part, but not under the second     are protectible by copyright,’ the second ‘involves
because “the determination of improper copying is to be made      determining whether the allegedly infringing work is
from the viewpoint of the ordinary observer.” Kohus, 328          ‘substantially similar’ to protectible elements of the artist’s
F.3d at 854 (citing Arnstein). The Ninth Circuit, the court of    work.’” Kohus, 328 F.3d at 855 (quoting Sturdza v. United
appeals with the largest case load and experience in the area     Arab Emirates, 281 F.3d 1287, 1295, 1296 (D.C. Cir. 2002)).
of movie industry copyright infringement, has adopted an          This test is more similar to the Ninth Circuit test than it is to
alternative two-part test. This test consists of an “‘extrinsic   the Second Circuit test. See Kohus, 328 F.3d at 855 n.1
test,’ in which expert testimony and analytic dissection may      (tracing history of the Sturdza test). The second part of our
be employed to help the jury ‘determine whether there has         test, and the Ninth Circuit’s intrinsic test, both address the
been copying of the expression of an idea rather than just the    question of whether the two works are, taken as a whole,
idea itself’ . . . and the ‘intrinsic test,’ in which expert      substantially similar in look and feel to a jury. The first part
testimony is not appropriate because the trier of fact must       of our test, and the Ninth Circuit’s extrinsic test, both require
determine substantial similarity from the viewpoint of the        a determination of what elements of the copyrighted work are
ordinary reasonable person.” Kohus, 328 F.3d at 854               protected by the law and an exclusion of consideration of all
(summarizing Krofft, 562 F.2d at 1163-64). While these            elements that are not.
names for the parts have remained, “[b]ecause the criteria
incorporated into the extrinsic test encompass all objective        However, significant differences remain in both parts. In
manifestations of creativity, the two tests are more sensibly     particular, we apply a more stringent standard regarding when
described as objective and subjective analyses of expression,     to allow expert testimony on the first part of the test. Also,
having strayed from Krofft’s division between expression and      not having adopted the eight Kouf factors, the first part of our
ideas.” Shaw v. Lindheim, 919 F.2d 1353, 1357 (9th Cir.           test remains more free in form than the Ninth Circuit’s
1990) (citations omitted). The extrinsic test focuses on          extrinsic test. “The essence of the first step is to filter out the
articulable similarities between plot, themes, dialogue, mood,    unoriginal, unprotectible elements . . . through a variety of
setting, pace, characters, and sequence of events in the two      analyses.” Kohus, 328 F.3d at 855 (citing Feist, 499 U.S. at
                                                                  345).
Nos. 01-2668/2721                 Murray Hill Pub., Inc. v.             11     12   Murray Hill Pub., Inc. v.              Nos. 01-2668/2721
                                Twentieth Century Fox Film                          Twentieth Century Fox Film
                                                     Corp.                          Corp.

  This brings us to the most complex part of the substantial                   whether there has been copying of the expression of an idea
similarity inquiry: the determination of which parts of the                    rather than just the idea itself.” Krofft, 562 F.2d at 1163.
original work are protectible and which are not. It is                         “[N]o one infringes, unless he descends so far into what is
“impossible to articulate a definitive demarcation that                        concrete [in a work] as to invade . . . [its] expression.” Nat’l
measures when the similarity between works involves                            Comics Publ’ns v. Fawcett Publ’ns, 191 F.2d 594, 600 (2d
copying of protected expression; decisions must inevitably be                  Cir. 1951). To draw the distinction between ideas and their
ad hoc.” Shaw, 919 F.2d at 1356 (citing Krofft, 562 F.2d at                    expressions, courts use the abstraction test first described by
1164). Nevertheless, certain categorical judgments and                         Judge Learned Hand with respect to a theatrical play. Kohus,
guideposts have been established. Unoriginal work enjoys no                    328 F.3d at 855.
copyright protection. “The sine qua non of copyright is
originality. To qualify for copyright protection, a work must                    Upon any work, and especially upon a play, a great
be original to the author.” Feist, 499 U.S. at 345. “[I]t is a                   number of patterns of increasing generality will fit
constitutional requirement that a plaintiff bringing an                          equally well, as more and more of the incident is left out.
infringement claim must prove ‘copying of constituent                            The last may perhaps be no more than the most general
elements of the work that are original.’” Kohus, 328 F.3d at                     statement of what the play is about, and at times might
853 (emphasis added in Kohus) (quoting Feist, 499 U.S. at                        consist only of its title; but there is a point in this series
361). However, “the requisite level of creativity is extremely                   of abstractions where they are no longer protected, since
low; even a slight amount will suffice. The vast majority of                     otherwise the playwright could prevent the use of his
works make the grade quite easily, as they possess some                          ‘ideas,’ to which, apart from their expression, his
creative spark, ‘no matter how crude, humble or obvious’ it                      property is never extended.
might be.” Feist, 499 U.S. at 345 (quoting 1 Nimmer,
§ 1.08[C][1]).                                                                 Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d
                                                                               Cir. 1930). This test will only place a work’s elements on a
  In the general run of cases, where minimal creativity can be                 spectrum from more expression-like to more idea-like. It
shown, the vital distinction is between ideas and their                        does not pick the point on the spectrum at which elements
expressions. Copyright does not protect ideas, but only the                    cease to be unprotected ideas and become protectible
expression of ideas. Kohus, 328 F.3d at 855.2 “The real task                   expressions. Nevertheless, it serves as a useful, if not
in a copyright infringement action, then, is to determine                      dispositive, analytical tool in drawing these distinctions. See
                                                                               Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489
                                                                               (2d Cir. 1960) (noting that “no principle can be stated as to
                                                                               when an imitator has gone beyond copying the ‘idea,’ and has
    2
      Of the two principles, that ideas are not p rotectible and that          borrowed its ‘expression’” and that such decisions hence must
expressions are protectible, it is the former that is the stronger. Where an   “inevitably be ad hoc”).
idea by necessity, or near-necessity, or custom, leads to a particular
expression, it is the expression which b ecomes unpro tected, rather than        Within the realm of works of fiction, literary or
the idea that become s protected. To reach the opposite conclusion would,
through the backdoor, create a forbidden cop yright in ideas. Shaw, 919        cinematographic, expressions not protectible because they
F.2d at 1360.                                                                  follow directly from unprotectible ideas are known as scènes
Nos. 01-2668/2721           Murray Hill Pub., Inc. v.      13    14    Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                          Twentieth Century Fox Film                   Twentieth Century Fox Film
                                               Corp.                   Corp.

à faire, “those elements that follow naturally from the work’s   are not protectible.” Williams v. Crichton, 84 F.3d 581, 589
theme, rather than from the author’s creativity.” Kohus, 328     (2d Cir. 1996). “The common use of such stock . . . merely
F.3d at 856 (quoting Nimmer § 13.03[F][3]). Scènes à faire       reminds us that in Hollywood, as in the life of men generally,
are those “incidents, characters or settings which are as a      there is only rarely anything new under the sun.” Id. at 588
practical matter indispensable, or at least standard, in the     (quoting Berkic v. Crichton, 761 F.2d 1289, 1294 (9th Cir.
treatment of a given topic.” Sturdza, 281 F.3d at 1295. A        1985)).
few examples provide concreteness to this definition:
                                                                    Another question of degree in the evaluation of substantial
  If Twelfth Night were copyrighted, it is quite possible        similarity is the amount of copying necessary to establish
  that a second comer might so closely imitate Sir Toby          infringement. At the extremes, the rules of law are again
  Belch or Malvolio as to infringe, but it would not be          clear. “Duplication or near identity is not necessary to
  enough that for one of his characters he cast a riotous        establish infringement. ” Krofft, 562 F.2d at 1167 (citing
  knight who kept wassail to the discomfort of the               Runge v. Lee, 441 F.2d 579, 582 (9th Cir. 1971), and
  household, or a vain and foppish steward who became            Williams v. Kaag Mfrs., 338 F.2d 949, 951 (9th Cir. 1964)).
  amorous of his mistress. These would be no more than           “A story has a linear dimension: it begins, continues, and
  Shakespeare’s ‘ideas’ in the play, as little capable of        ends. If a defendant copies substantial portions of a plaintiff’s
  monopoly as Einstein’s Doctrine of Relativity, or              sequence of events, he does not escape infringement by
  Darwin’s theory of the Origin of Species. It follows that      adding original episodes somewhere along the line.” Warner
  the less developed the characters, the less they can be        Bros. v. ABC, 720 F.2d 231, 241 (2d Cir. 1983). “The
  copyrighted; that is the penalty an author must bear for       misappropriation of even a small portion of a copyrighted
  marking them too indistinctly.                                 work . . . may constitute an infringement under certain
                                                                 circumstances.” Murray Hill Publ’ns v. ABC Comm., 264
Nichols, 45 F.2d at 121. Other genres provide additional         F.3d 622, 633 (6th Cir. 2001) (citing Universal Pictures Co.
examples of scènes à faire. “Elements such as drunks,            v. Harold Lloyd Corp., 162 F.2d 354, 361 (9th Cir. 1947)).
prostitutes, vermin and derelict cars would appear in any        “Even if a copied portion be relatively small in proportion to
realistic work about . . . policemen in the South Bronx” and     the entire work, if qualitatively important, the finder of fact
are therefore not protectible. Walker v. Time Life Films, 784    may properly find substantial similarity.” Baxter v. MCA,
F.2d 44, 50 (2d Cir. 1986). Similarly, “[f]oot chases and the    Inc., 812 F.2d 421, 425 (9th Cir. 1987). “No plagiarist can
morale problems of policemen, not to mention the familiar        excuse the wrong by showing how much of his work he did
figure of the Irish cop, are venerable and often-recurring       not pirate.” Shaw, 919 F.2d at 1362 (quoting Nimmer,
themes of police fiction,” and hence not protectable. Ibid.      § 13.03[B][1][a]). However, “individual lines of dialogue [in
“While both the Dinosaur World books and the Jurassic Park       a movie] are not automatically entitled to copyright
works share a setting of a dinosaur zoo or adventure park,       protection.” ABC, 264 F.3d at 632. “[W]hen a single line of
with electrified fences, automated tours, dinosaur nurseries,    a larger copyrighted work is appropriated by an alleged
and uniformed workers, these settings are classic scenes a       infringer, the test is whether ‘the work is recognizable by an
faire that flow from the uncopyrightable concept of a dinosaur   ordinary observer as having been taken from the copyrighted
zoo. Thus, though perhaps substantially similar, the settings
Nos. 01-2668/2721             Murray Hill Pub., Inc. v.       15    16   Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                            Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                 Corp.                   Corp.

source.’” Id. at 633 (quoting Harold Lloyd, 162 F.2d at 361).       328 F.3d at 856-57. As the diminished market for
“[I]t is the combination of many different elements which           copyrighted work is the harm that the copyright law seeks to
may command copyright protection because of its particular          avoid, this issue is crucial and contains an element of
subjective quality.” Krofft, 562 F.2d at 1169 (citing Reyher        subjectivity not found in most other jury determinations.
v. Children’s Television Workshop, 533 F.2d 87, 91-92 (2d           Therefore, courts have recognized “that granting summary
Cir. 1976), and Ideal Toy Corp. v. Sayco Doll Corp., 302 F.2d       judgment, particularly in favor of a defendant, is a practice to
623, 624 (2d Cir. 1962)). “While any one similarity taken by        be used sparingly in copyright infringement cases.”
itself seems trivial, . . . it would [not] be improper for a jury   Wickham, 739 F.2d at 1097; accord Kohus, 328 F.3d at 853.
to find that the over-all impact and effect indicate substantial    However, even taking into account this factor, summary
appropriation.” Krofft, 562 F.2d at 1169 (quoting Malkin v.         judgment is still permissible and may even be required.
Dubinsky, 146 F. Supp. 111, 114 (S.D.N.Y. 1956)).                   Wickham, 739 F.2d at 1097; Kohus, 328 F.3d at 853. Courts
However, “random similarities scattered throughout the              “have frequently affirmed summary judgment in favor of
works” can be discounted. Litchfield v. Spielberg, 736 F.2d         copyright defendants on the issue of substantial similarity.”
1352, 1356 (9th Cir. 1984). “Such a scattershot approach            Shaw, 919 F.2d at 1355. One reason to do so is that the
cannot support a finding of substantial similarity because it       question of substantial similarity can usually be decided on
fails to address the underlying issue: whether a lay observer       the basis of the works themselves and rarely, if ever, involves
would consider the works as a whole substantially similar to        questions of credibility, the peculiar province of the jury.
one another.” Williams, 84 F.3d at 590 (citing Walker, 784          Also, while judges “may not be qualified literary critics,
F.2d at 50, and Burroughs v. Metro-Goldwyn-Mayer, 683               [they] are fitted by training and experience to compare literary
F.2d 610, 624 (2d Cir. 1982)).                                      works and determine whether they evidence substantial
                                                                    similarity.” O’Neill v. Dell Publ’g Co., 630 F.2d 685, 690
  Finally, the issue arises of the proper standard for appellate    (1st Cir. 1980).
review of a grant or denial of a motion for judgment as a
matter of law in a copyright infringement case. The                                               IV
cornerstone of such review in copyright infringement cases,
just as in other cases, is whether, given the law and evidence        With this background on some relevant aspects of the law
presented, a reasonable jury could have found for the non-          of copyright infringement, we turn to the facts of this case.
moving party. Nevertheless, the issue of whether substantial        The crucial issue is the degree of similarity between CTBC
similarity exists has certain features with special significance    and JATW. While both of these works went through
in the application of this standard. A jury deciding the issue      numerous revisions, Murray Hill’s core claim is that the
of substantial similarity not only makes findings of historical     JATW movie infringes on its copyright to the CTBC
fact, but usually also serves as a proxy for the works’             screenplay. A detailed summary of both is in order:
intended audience. In this role as proxy, jurors decide not
only what happened, but also can be properly influenced by            CTBC tells the story of Bess Parker, a poor white divorced
whether their exposure to the alleged infringing work would         cleaning woman with a six-year-old son, Tommy. Lacking a
diminish their appetite for the copyrighted work. See Kohus,        father figure, Tommy focuses obsessively on “Action Man,”
                                                                    a super-hero action figure. Twelve days before Christmas,
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.       17    18   Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                           Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                Corp.                   Corp.

Bess goes to the local toy store to buy the toy she has            meet at a coffee shop, discuss their difficulties in finding an
previously reserved. But when she finds herself short of cash      Action Man toy and Bess’s potential romantic involvement
to pay for it and the store clerks refuse to hold it for her any   with Steve, whom both women believe to be a mere Santa
longer, Bess hides the toy in the store. The next day Bess         Claus impersonator rather than the owner of the toy store.
returns to buy the toy she stashed away, but it is snatched out    Meanwhile, Steve has been trying to use his position as a toy
of her hands by Clare, a wealthy black woman who owns and          store owner to obtain an Action Man toy for Tommy. On
operates a real estate business. Bess attempts to recover the      Steve and Bess’s next date, Bess insists that they go
toy by threatening Clare with an authentic-looking toy gun,        Christmas shopping at an inexpensive store, because Bess
but Clare gets away. Dejected, Bess returns to the subsidized      believes that the expensive department store suggested by
apartment that she shares with her mother. Bess and Tommy          Steve is unaffordable for them.
buy a cheap Christmas tree and decorate it.
                                                                     The next time Bess goes to clean Clare’s house, she
   The next day, while cleaning the home of Carol, an              discovers a bag full of Action Man toys and, annoyed at
employee of Clare’s, Bess meets Steve, Carol’s brother and         Clare’s greed, hides one of the figures under a pillow. When
owner of a toy store. Later that day, Bess takes Tommy to see      Bess visits Carol’s house in order to see Steve, Carol
a toy store Santa Claus without realizing that it is Steve in      mentions that Steve is in fact a well-to-do toy store owner,
disguise. When Bess becomes angry at the Santa Claus for           and Bess, furious with Steve for having misled her, storms
promising Tommy an Action Man figure, Steve reveals his            out. Having put Tommy, who is full of confidence that he is
identity and Steve and Bess agree to go on a date. That            going to receive an Action Man figure, to bed and inspired by
evening, Carol calls Bess to tell her that Clare’s company is      a drawing Tommy has made of an Action Man figure, Bess
going to tear down Bess’s apartment building. The next day,        decides to break into Clare’s home and retrieve the toy she
Bess goes to a bank branch to obtain a loan to pay off her bills   had stashed away. Bess, wearing camouflage face paint, is
and a scene ensues when she accidentally pulls the toy gun         surprised by Clare, who mistakes her for the Night Prowler,
out of her purse. Bess’s next cleaning job is Clare’s house,       a burglar who has been plaguing the neighborhood, but Bess
where she meets Eric, Clare’s husband and a doctor. Eric is        manages to escape with the Action Man figure. The
annoyed that Bess mistakes him for a servant, perhaps              following day, Bess and her mother have a kitchen-table
because Eric too is black. At night, Eric shares this story with   conversation. Bess, in despair over her financial situation, the
Clare. The next day, Steve takes Bess to Carol’s office party      imminent eviction, and the fact that she is a thief, decides to
where Bess for the first time realizes that the woman who          return the Action Man figure. After Bess is gone, Tommy
took her action figure, the woman whose house she has been         shows his grandmother the cereal-box tops he has collected to
cleaning, and the woman whose company is going to tear             redeem for an Action Man figure and she decides to forego
down her home are all one and the same.                            playing the lottery and redeem the box tops instead.
  Back at home, Bess agrees to go sledding with Steve.               When Bess arrives at Clare’s house, Clare and Eric are
When Steve returns to Carol’s house, he tells her about his        having a discussion on the wisdom of Clare’s plans to evict
feelings for Bess. Over the following days, Steve takes Bess       poor tenants in order to make room for her development
and Tommy sledding and shopping. Bess and her mother               project. As Bess tries to return the Action Man figure to
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.      19    20   Murray Hill Pub., Inc. v.           Nos. 01-2668/2721
                           Twentieth Century Fox Film                  Twentieth Century Fox Film
                                                Corp.                  Corp.

Clare’s stash, Clare comes upon her and for the first time        the ceremony at which Jamie is to be awarded his purple belt
notices that her cleaning woman is the woman with whom she        in karate. Having been detained at the office by business
struggled in the toy store. In the ensuing melee, Bess drops      calls, Howard speeds to the ceremony, but is caught by police
the action figure and flees the scene. Back at home, Clare        officer Hummel and as a consequence misses the award
again talks about Steve with her mother. The winning lottery      ceremony. Howard’s wife Liz instead attends the ceremony
numbers are announced and Bess’s mother realizes that she         with their divorced neighbor, the oleaginous Ted, whose son
would have won had she played that day. At this moment,           also receives a belt at the ceremony. The next morning, in
police officers enter and arrest Bess for being the Night         order to return himself into the good graces of the deeply
Prowler.                                                          disappointed Jamie, Howard promises to buy him a Turbo
                                                                  Man action figure for Christmas. After this prologue, the
   Enraged, Bess’s mother heads to Clare’s home and berates       action skips forward to the morning of Christmas Eve at the
her in front of her party guests for having had Bess arrested.    Langston’s well-appointed home. Liz asks Howard whether
After the party is over, Clare proceeds to a local church where   he bought the Turbo Man figure. Howard, who had forgotten,
she, dressed in a Santa Claus suit, hands out presents to poor    nevertheless claims he did. Howard leaves, according to him
children. After listening to the local priest describe the        in order to pick up the toy from his office, but not before
children’s plight, she has a change of heart. She returns         promising Jamie that he will attend a Christmas parade at
home, collects all the presents under her Christmas tree, and     which Turbo Man is scheduled to appear.
distributes them to the poor children at a local homeless
shelter. Meanwhile, Bess is released on bail, raised by her          Howard begins his frantic search for the Turbo Man action
kindly neighbor, and Eric apprehends the real Night Prowler.      figure at a local toy store. Here he meets Myron Larabee, a
Clare, having discovered her error in identifying Bess as the     stressed-out black mailman, who also is trying to make a last-
Night Prowler, heads to Bess’s apartment where she tears up       minute purchase of a Turbo Man figure for his son. When
the eviction notice. She also offers Bess an Action Man           Howard and Myron ask store clerks for a Turbo Man figure,
figure, but Bess, realizing that her son needs his mother, not    they are laughed at for expecting to be able to find this
a toy, declines the gift. The following morning, Tommy is         extremely popular toy at such a late date. After driving from
understanding about not receiving an Action Man figure and        store to store without success, Howard overhears that a store
Bess reconciles with Steve. Tommy discovers another               at a local mall just received a late shipment of Turbo Man
present, an Action Man figure after all, and for the lack of a    figures. In his haste to get to the mall, Howard runs over
better explanation, concludes that the real Santa must have       Hummel’s motorcycle. Hummel is not amused. At the mall,
brought it. As credits roll, a trio of Santas are seen walking    when the toy store clerks try to distribute numbered balls to
towards the homeless shelter. In the final image of the           establish priority for the limited quantity of Turbo Man
proposed movie, the Santas turn around and reveal one to be       figures, a riot breaks out. After Howard and Myron struggle
black, one to be white, and one to be Japanese.                   across the mall for one of the balls, Howard overcomes
                                                                  Myron only to lose the ball to an infant.
  The protagonist of the JATW movie is Howard Langston,
the workaholic CEO of a mattress company. Howard has               A suspicious-looking mall Santa offers to take the dejected
promised his eight-year-old son Jamie that he would attend        Howard to a secret warehouse where Turbo Man figures are
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.      21    22    Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                           Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                Corp.                   Corp.

still available. At the warehouse, filled with Santa Clauses      disgusted with Howard’s behavior, leaves for the parade with
and elves, Howard pays $300 for a Turbo Man figure, only to       Jamie, Ted, and Ted’s son. After dropping off the children,
have it revealed as a poorly made foreign knock-off, which        Ted attempts to kiss Liz, who violently rebuffs his advances.
promptly falls apart in his hands. Before Howard can              Meanwhile, Howard shares some beers with the reindeer and
complain, the police raid the warehouse and arrest the Santas     also heads for the parade. There Howard, mistaken for the
and elves. Howard barely escapes by using a toy police            actor hired to play Turbo Man, is put into a high-tech Turbo
identification badge. Howard’s SUV, parked outside the            Man costume, put on a float, and given a special Turbo Man
warehouse, has been stripped clean by thieves.                    action figure to present to the attending child of his choice.
   Howard and Myron run into each other again in a coffee            At the parade, Howard/Turbo Man spots Jamie, who does
shop and commiserate. Myron explains to Howard how all            not recognize him, in the crowd and gives him the Turbo Man
his life’s misfortunes are traceable to not receiving a           figure. At this point, Myron, who has stolen the costume of
particular popular toy when he was a child. A radio playing       Dementor, Turbo Man’s nemesis, attacks Howard and Jamie
in the coffee shop announces a call-in contest offering a         with intent to steal the figure. In a special-effects-heavy fight
Turbo Man figure to the first person to name all of Santa’s       between Howard/Turbo Man and Myron/Dementor, echoing
reindeer. Myron and Howard fight over the local payphone          an episode of the Turbo Man television program glimpsed at
but only manage to break it. Instead, they start running to the   the beginning of the movie, Howard defeats Myron. After the
nearby radio station. Howard, being in much better physical       fight, Howard reveals himself to Jamie. Jamie realizes that
condition than the portly Myron, arrives first at the station     because he has the real Turbo Man for a father he does not
and breaks into the broadcast booth of the program’s host.        need the action figure and gives the figure to Myron.
Shortly afterwards, Myron too breaks into the booth and           Howard, Liz, and Jamie embrace and credits roll. In a post-
threatens to blow it up using a mail bomb he carries unless he    credit scene, Liz wonders what Howard bought her for
is given the Turbo Man figure. When the host reveals that he      Christmas and the horrified Howard realizes that he forgot to
was only offering a gift certificate, Howard leaves, but Myron    buy her a present.
drops the “bomb” which turns out to be only a regular
Christmas package. On the way out of the station, Myron is                                       V
apprehended by a police SWAT team, led by Hummel, but
manages to escape by using another mail bomb. This bomb              Most of the issues that form the basis of a copyright
does explode, leaving Hummel comically singed.                    infringement claim are no longer in dispute in this case. The
                                                                  CTBC screenplay was copyrighted. Fox did have access to
  Howard returns home defeated, but sees Ted and Liz              the CTBC screenplay before it registered the JATW
decorating his Christmas tree. Jealous and enraged, Howard        screenplay and before production of the JATW movie, but not
breaks into Ted’s house to steal the Turbo Man figure that        before it received the JATW “treatment.” Finally, the jury
Ted had bragged about buying for his son. Inside Ted’s            found that the JATW movie and the CTBC screenplay were
house, Howard is attacked by Ted’s pet reindeer, accidentally     substantially similar, establishing Murray Hill’s copyright
sets fire to several rooms, and is ultimately discovered by Ted   infringement claim. Fox appeals on the basis of the denial of
and Liz while holding the stolen Turbo Man figure. Liz,           its pre- and post-verdict motions for judgment as a matter of
Nos. 01-2668/2721            Murray Hill Pub., Inc. v.       23    24    Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                           Twentieth Century Fox Film                    Twentieth Century Fox Film
                                                Corp.                    Corp.

law on the issue of substantial similarity. “Judgment as a         neighbor (a minor sympathetic character in CTBC and Ted in
matter of law is appropriate only when there is a complete         JATW), and three similarities in the theft of the toy (from
absence of fact to support the verdict, so that no reasonable      Clare by Bess in CTBC and from Ted by Howard in JATW).
juror could have found for the nonmoving party.” Fisher v.         Each of these similarities is tenuous. At the level of actual
Ford Motor Co., 224 F.3d 570, 574 (6th Cir. 2000) (quoting         expression they differ significantly, and at any level of
Moore v. KUKA Welding Sys. & Robot Corp., 171 F.3d 1073,           abstraction that covers both JATW and CTBC, they are
1078 (6th Cir. 1999)).                                             ubiquitous in literature and the cinema. We are instructed to
                                                                   look at such slight similarities holistically to determine
   Fox’s principal basis for requesting judgment as a matter of    whether collectively they could prove substantial similarity.
law is the six-page “treatment” that Kornfield registered prior    Where, as here, the slight similarities are not thematically
to the time that Murray Hill could establish, directly or          related, the whole is no greater than the sum of the parts.
inferentially by means of striking similarity, that Fox had        Therefore, if the court was required to filter out all the other
access to the CTBC screenplay. At trial, Murray Hill pressed       similarities, summary judgment for Fox would have been
several theories about how Fox could have gained access to         appropriate.
the CTBC screenplay earlier, but the district court found that
these theories were too speculative to establish access and           Contrary to the parties’ equally fervent, though otherwise
Murray Hill does not appeal this finding. As we noted above,       diametrically opposed, assertions, the question of whether
striking similarity, precluding all possible conclusion but that   elements already found in a copyright defendant’s earlier,
the work was copied, can substitute for proof of access.           non-infringing work are properly discounted in performing
However, even a superficial glance at the CTBC screenplay          substantial similarity analysis is, at least in this court, one of
and the JATW treatment reveals that whatever the                   first impression. The canonical statement of law is that non-
similarities, they most certainly do not approach the level        protectible elements must be filtered out. Kohus, 328 F.3d at
precluding all possibilities but copying. Therefore, the           855. But here the argument is not that the eighteen
district court rightly found that the treatment was an             similarities allegedly shared by the CTBC screenplay, the
independent creation.                                              JATW movie, and the JATW treatment were non-protectible,
                                                                   but rather that these elements were independently created.
   Murray Hill’s claim of substantial similarity between the       We turn to persuasive precedent and reason to determine
JATW movie and the CTBC screenplay rested on an expert-            whether independently created elements must be discounted.
prepared list of twenty-four similarities between the two.
However, of these twenty-four similarities, all but six already       Precedents in our sister circuits suggest that under
existed in the independently created treatment. Thus, only         appropriate circumstances even protectible elements may be
those six elements could possibly have been taken by Fox           filtered out. In Apple Computer v. Microsoft Corp., 35 F.3d
from the CTBC screenplay. These six remaining similarities         1435 (9th Cir. 1994), Apple filed suit alleging that elements
were the children’s drawings (of Action Man in CTBC and of         of Microsoft’s graphical user interface infringed on the
the Langston family in JATW), the unhelpful toy store clerks       copyright of Apple’s equivalent software. Significantly,
(refusing to give the toy to Bess in CTBC and laughing at          Microsoft had obtained a license from Apple for some, but
Howard’s late request for the toy in JATW), the intrusive          not all, elements of Apple’s software. The court stated that
Nos. 01-2668/2721             Murray Hill Pub., Inc. v.       25    26   Murray Hill Pub., Inc. v.             Nos. 01-2668/2721
                            Twentieth Century Fox Film                   Twentieth Century Fox Film
                                                 Corp.                   Corp.

“[w]here, as here, the accused works include both licensed          legally copy from himself. Therefore, where an element
and unlicensed features, infringement will depend on whether        occurs both in the defendant’s prior work and the plaintiff’s
the unlicensed features are entitled to protection.” Id. at 1441.   prior work, no inference of copying can be drawn. See
“Because only those elements of a work that are protectible         Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d
and used without the author’s permission can be compared            Cir. 1936) (“If the defendant has had access to other material
when it comes to the ultimate question of illicit copying, we       which would have served him as well, his disclaimer [of
use analytic dissection to determine the scope of copyright         copying] becomes more plausible.”); Ellis, 177 F.3d at 507
protection before works are considered ‘as a whole.’” Id. at        (“[A]n inference of copying is rebuttable by evidence of
1443 (citations omitted). In so concluding, the Apple court         independent creation of the allegedly infringing work.”)
extended the application of filtering, from unprotectible           (citations omitted). Such elements should be removed from
elements to protectible elements used with the permission of        consideration.
the copyright owner.
                                                                       Therefore, we hold that elements of a copyright defendant’s
  In Sturdza, an architect brought a claim against the United       work that were created prior to access to a plaintiff’s work are
Arab Emirates alleging that the design of the defendant’s new       to be filtered out at the first stage of substantial-similarity
embassy infringed on the copyright of architectural drawings        analysis, just as non-protectible elements are. In the present
she had previously submitted to the defendant. 281 F.3d at          case, no reasonable jury could have found substantial
1291-92. The defendant contended that the design was in fact        similarity solely on the basis of the six minor elements not so
based on the work submitted by another architect. Ibid. The         filtered. Therefore, Fox’s motion for judgment as a matter of
district court in performing the substantial-similarity analysis    law should have been granted.
discounted elements of the embassy design that were already
present in work submitted by the other architect before the                                       VI
defendant had access to the plaintiff’s drawings. Id. at 1297.
Because the plaintiff did not appeal this discounting, the            For the foregoing reasons, we REVERSE the judgment of
District of Columbia Circuit also excluded the elements that        the district court and REMAND for an entry of judgment as
were already present in the earlier work. Ibid.                     a matter of law in favor of Fox.

   Logic also supports the filtering of independently-created
elements. The purpose of the substantial-similarity analysis
is to answer the question whether the defendant copied the
work of the plaintiff. Ordinarily, similar elements between
known work of the plaintiff and the defendant’s work will,
depending on the degree of uniqueness and originality of the
element, support such an inference. However, where
defendant owns a prior work containing the same elements,
he has no reason, beyond the illicit thrill of copyright
infringement, to copy wrongfully from another what he could
