932 F. Supp. 2d 538
S.D.N.Y.2013Background
- Effie Film, LLC sues Gregory Murphy for a declaratory judgment that Effie’s film and November 2011 shooting script do not infringe Murphy's copyright in The Countess.
- Murphy claimed infringement beginning in 2009; Effie Film later amended its complaint to reflect that the film was in production and the script had changed.
- Effie Film sought a ruling based on the November 2011 shooting script; the film’s final cut was not yet provided to the court.
- Historical background: both Effie and The Countess fictionalize the same Victorian-era events concerning Effie Gray and John Ruskin; protectable elements must be distinguished from unprotectable historical facts.
- The court applied Rule 12(c) standard, treating pleadings as true for purposes of a declaratory judgment of non-infringement, and looked to substantial similarity of protectable elements.
- The court concluded that Effie and The Countess are not substantially similar and granted judgment that the shooting script and film do not infringe Murphy’s copyright, to the extent they remain faithful to the shooting script.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Existence of an actual controversy | Effie argues there is an actual controversy over non-infringement | Murphy claims the dispute is not concrete since the film is incomplete | There is an actual controversy sufficient for jurisdiction |
| Substantial similarity between Effie and The Countess | Effie contends limited protectable elements and total concept differ from The Countess | Murphy argues substantial similarity due to shared historical basis | Not substantially similar; the works differ in expression and structure |
| Scope of infringement analysis at pleadings stage | Effie asserts court can decide substantial similarity on the pleadings | Murphy argues need for more development and possibly the film itself | Court may decide substantial similarity at pleadings stage |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (plausibility standard for Rule 12(b)(6) and 12(c) motions)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard for pleading requirements)
- Feist Publications v. Rural Tel. Serv. Co., 499 U.S. 340 (U.S. 1991) (copyright requires ownership and copying of original elements)
- Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996 (2d Cir. 1995) (protectable elements; unprotectable ideas; total concept and similarity)
- Peter F. Gaito Architecture, LLC v. Simone DeV. Corp., 602 F.3d 57 (2d Cir. 2010) (explaination of 'total concept and overall feel' in substantial similarity)
- Reyher v. Children’s Television Workshop, 533 F.2d 87 (2d Cir. 1976) (essence of infringement lies in expression, not general theme)
- Walker v. Time Life Films, Inc., 784 F.2d 44 (2d Cir. 1986) (scenes á faire and precedent in protectable elements)