ORDER DENYING DEFENDANTS’ MOTION TO DISMISS PLAINTIFF’S SECOND CAUSE OF ACTION AND GRANTING DEFENDANTS’ MOTION TO DISMISS PLAINTIFF’S THIRD CAUSE OF ACTION
This case is before the Court on the motion of defendants New Line Cinema Corporation (“New Line”) and Toby Em-merich (“Emmerich”) to dismiss plaintiff William Selby’s (“Selby”) causes of action for violation of the Lanham Act and breach of implied-in-fact contract pursuant to F.R.Civ.P. 12(b)(6) or, in the alternative, for partial summary judgment on these claims. Selby’s claims arise out of Emmerich’s alleged copying of a screenplay written by Selby and New Line’s subsequent purchase of Emmerich’s screenplay and production of a film based on it. Selby asserts claims against both defendants for (1) copyright infringement, (2) violation of the Lanham Act and (3) breach of implied-in-fact contract. Defendants challenge only the second and third causes of action in this motion.
The Court concludes first that plaintiffs second cause of action adequately alleges a Lanham Act violation. However, plaintiffs claim for breach of implied-in-fact contract is preempted by the Copyright Act. 1 For these reasons, and as set forth more fully below, the Court grants in part and denies in part defendants’ motion.
FACTUAL ALLEGATIONS
The Complaint alleges that during 1991 and 1992, Selby “conceived of an idea for a theatrical motion picture and authored a screenplay based upon that idea entitled ‘Doubletime.’ ” Complaint ¶ 12.
2
In 1992,
In July 1994, Selby’s agents submitted the “Doubletime” screenplay and Selby’s “Ideas” for the screenplay to New Line for review and consideration. Id. at ¶¶ 15, 34. New Line informed Selby that it had recently produced a “time-travel” film and “it was therefore reluctant to produce another film that employed transitions in time as a central element. However, New Line requested that it be shown any future drafts of ‘Doubletime’ that were written by Selby.” Id. at ¶ 15.
“At the time the presentation was made [in July 1994], defendants knew and understood that Selby expected to be compensated and receive screen credit if defendants used the Ideas for the creation, development and production of a theatrical feature film.” Id. Based on this understanding, “an implied-in-fact contract existed] between Selby and defendants such that defendants impliedly agreed to pay Selby the reasonable value of the Ideas and give appropriate screen credit if those Ideas, or any of them, were utilized by defendants to produce and distribute a theatrical motion picture.” Id. at ¶ 35. Nowhere in the complaint does Selby describe or characterize the supposed “Ideas.”
In spite of its representations to Selby, New Line subsequently purchased a screenplay written by defendant Emme-rich entitled “Frequency” (the “Film”) for one million dollars. Id. at ¶ 5. The Film is currently in production and is scheduled for release this year. Id. Selby contends that both Emmerich and New Line “copied the expression of ‘Doubletime’ ” — Emme-rich by writing the “Frequenc/’ screenplay and New Line by developing and producing the Film based on “Frequency.” Id. at ¶¶ 17-18.
The “Frequency” screenplay states that it was “Written by Toby Emmerich,” not Selby. Id. at ¶ 24. Both the “Frequency screenplay and the Film as produced “bodily appropriate[ ] and cop[y] the original expression of the screenplay ‘Double-time.’ ” Id. at ¶¶ 25-26. Finally, Selby alleges that defendants used his “Ideas” in producing the Film without compensating him or providing him with any screen credit. Id. at ¶ 36.
DISCUSSION
I. Legal Standards for a Motion to Dismiss Pursuant to Rule 12(b)(6)
On a motion to dismiss pursuant to Rule 12(b)(6) for failure to state a claim, the allegations of the complaint must be accepted as true and are to be construed in the light most favorable to the nonmoving party.
Wyler Summit Partnership v. Turner Broadcasting System, Inc.,
“Generally, a district court may not consider any material beyond the pleadings in ruling on a Rule 12(b)(6) motion ... However, material which is properly submitted as part of the complaint may be considered” on a motion to dismiss.
Hal Roach Studios, Inc. v. Richard Feiner & Co.,
Plaintiffs second cause of action alleges that defendants’ conduct constitutes “reverse passing off’ in violation of the Lanham Act, 15 U.S.C. § 1125(a). Complaint ¶ 29. Specifically, Selby alleges that both “[t]he screenplay ‘Frequency,’ as written by Emmerich” and “[t]he film ‘Frequency,’ as produced by New Line based on the screenplay by Emmerich bodily appropriate[ ] and cop[y] the original expression of the screenplay ‘Doubletime.’ ” Id. at ¶¶ 25-26.
Reverse passing off occurs “when a product is mislabeled to mask the creator’s contribution.”
Cleary v. News Corp.,
Defendants provide copies of both the “Doubletime” screenplay (Declaration of Ginny Martino, Ex. A) and the “Frequency” script that Emmerich “sold in 1995” (Declaration of Toby Emmerich '¶ 2, Ex. A) with their moving papers. They urge the Court to examine the scripts and determine that Emmerich’s “Frequency” script does not bodily appropriate Selby’s “Dou-bletime” script. While defendants assert that the Court may consider the screenplays without converting this motion into a motion for partial summary judgment, they alternatively contend that the Court may properly render partial summary judgment in them favor. In response, plaintiff asks the Court not to consider this extraneous evidence because: (1) it is unclear whether the “Frequency” screenplay attached to Emmerich’s declaration is either the same screenplay that Emmerich sold to New Line or that it is the Film’s final “shooting script” and (2) plaintiff has not had an opportunity to review the actual Film produced by New Line.
Without necessarily adopting plaintiffs reasoning, the Court concludes that it would be premature to engage in a factual comparison of the screenplays at this early stage in the proceedings — particularly in light of the parties’ near-total failure to cite to specific passages or portions of the two scripts. Accordingly, the Court exercises its discretion not to consider such evidence. See Schwarzer, Tashima & Wagstaffe, California Practice Guide: Federal Civil Procedure Before Trial § 9:236 (1999). Plaintiffs complaint adequately alleges 'that defendants violated the Lanham Act by bodily appropriating his work. Therefore, the Court denies defendants’ motion to dismiss this claim. 3
III. Third Cause of Action — Breach of Implied-In-Fact Contract
“In order to establish an' implied-in-fact contract in the entertainment context, a plaintiff must allege: ‘that he or she prepared the work; that he or she disclosed the work to an offeree for sale; that under all circumstances attending disclosure it can be concluded that the offeree voluntarily accepted the disclosure knowing the conditions on which it was tendered (i.e., the offeree must have the opportunity to reject the attempted disclosure if the conditions were unacceptable); and the reasonable value of the work.’ ”
Star Patrol Enterprises, Inc. v. Saban Entertainment, Inc.,
A. Copyright Act Preemption
Selby alleges that defendants impliedly agreed not to use any of his Ideas in the production of any film without giving him appropriate compensation and screen credit. Complaint ¶ 35. He contends that defendants breached this implied-in-fact contract by producing the Film without fulfilling either of these promises. Id. at ¶ 36.
Under California law the use of ideas unprotected by copyright may provide the basis for a breach of contract claim because “the policy that precludes protection of an abstract idea by copyright does not prevent its protection by contract.”
Desny v. Wilder,
The Ninth Circuit employs a two-part test to determine whether the Act preempts particular state law claims. Preemption occurs when: (1) the work at issue comes within the subject matter of copyright and (2) the rights granted under state law are “equivalent to any of the exclusive rights within the general scope of copyright” set forth in the Act.
Del Madera Properties v. Rhodes and Gardner, Inc.,
In Del Madera, the plaintiffs alleged claims for copyright infringement, unfair competition and unjust enrichment based on the defendants’ alleged misappropriation of (1) a copyrighted map of a real estate development, (2) supporting documents and (3) plaintiffs’ time and effort in creating the map and documents. The Ninth Circuit held that the Act preempted plaintiffs’ state law claims. First, the map, the documents and the plaintiffs’ effort expended to create them were all within the scope of copyright protection. Id. at 976. With regard to the “equivalent rights” inquiry, neither of the state claims contained the requisite extra element. Plaintiffs’ unfair competition claim for misappropriation of their time and effort in creating the map was “part and parcel of the copyright claim.” Id. at 977. Moreover, their claim for unjust enrichment was also indistinguishable from the copyright claim because “[defendants’] implied promise not to use or copy materials within the subject matter of copyright is equivalent to the protection provided by [the Act].” Id.
1. Subject Matter of Copyright
Here, defendants assert that plaintiffs third claim “attempts to recover for [their] alleged copying of plaintiffs script” and that “[the] script is undeniably a work of authorship within the ‘general scope of copyright.’ ” Memorandum at 7. Although plaintiff does not directly challenge this assertion, it is clear from the face of the Complaint that his third claim for relief purports to address defendants’ alleged use of his “Ideas,” not merely the copying of his “Doubletime” screenplay. However, the Court concludes that plaintiffs ideas fall within the subject matter of copyright.
The Ninth Circuit has not addressed the issue whether the ideas underlying a screenplay are “within the subject matter
At least one court in this District has adopted the Fourth Circuit’s reasoning.
See Endemol Entertainment B.V. v. Twentieth Television, Inc.,
The position advocated by these authorities, i.e., that ideas may fall within the subject matter of copyright, appears to be based on an interpretation of § 102 that can be paraphrased as follows:
When read together, subsections (a) and (b) of § 102 define what works fall within the subject matter of copyright. However, only works that meet the criteria articulated by subsection (a) are entitled to copyright protection. Therefore, an item listed in subsection (b), such as an idea, procedure, process, etc., does not receive copyright protection but is nevertheless within the subject matter of copyright for purposes of preemption.
This Court need not adopt a sweeping interpretation of § 102 that would place all ideas within the subject matter of copyright for purposes of preemption. However, the Court does conclude that merely because “Ideas” are what Selby claims are the subject matter of his breach of implied-in-fact contract cause of action does not remove them from the “subject matter of copyright.” Here, it is enough that the Ideas which are the subject of Selby’s breach of contract claim are embodied in a copyrighted work — the “Doubletime” script.
In
National Basketball Ass’n v. Motorola,
Although game broadcasts are copyrightable while the underlying games are not, the Copyright Act should not be read to distinguish between the two when analyzing the preemption of a misappropriation claim based on copying ortaking from the copyrightable work.... Copyrightable material often contains uneopyrightable elements within it, but § 301 preemption bars state law misappropriation claims with respect to uneopyrightable as well as copyrightable elements.
Id. at 848-849.
Subsequent decisions have applied the reasoning and ruling of
Motorola
in cases analogous to this one.
See Boyle v. Stephens, Inc.,
Here, Selby’s breach of implied-in-fact contract claim is based on the uncopyright-ed ideas underlying his copyrighted “Doubletime” screenplay. Complaint ¶ 33. He claims that defendants impliedly promised not to use those ideas in any work for which he would receive no credit or compensation. Based on the authorities cited above, the Court concludes that Selby’s ideas fall within the subject matter of copyright.
2. Equivalent Rights
In determining whether a state law claims protect rights equivalent to the exclusive rights protected by the Act, the critical inquiry is whether the claim contains an “extra element” that changes the nature of the action.
Del Madera,
According to
Lennon v. Seaman,
Courts employing the first view have concluded that a defendant’s very promise to refrain from using the plaintiffs ideas or copyrighted materials without compensation provides the extra element.
See, e.g., Architectronics, Inc. v. Control Sys
[A] breach of contract action (whether such contract involves a mere idea or a fully developed literary work) is not predicated upon a right that is ‘equivalent to any of the exclusive rights within the general scope of copyright ... ’ This for the reason that a contract right may not-be claimed unless there exists an element in addition to the mere acts of reproduction, performance, distribution or display. That additional element is a promise (express or implied) upon the part of the defendant.
4 Nimmer § 16.04[C] at 16-25 (July 1994 release).
The troubling aspect of this analysis is that conceivably the promise may not really be an “additional element.” Suppose,
e.g.,
that the defendant promised “I will not infringe any copyright or copyright protection in the script you are proposing to show me.” In that case, the very promise is so inextricably entwined with the copyright that to permit the promisee to sue upon it would undermine the preemption feature of the Copyright Act.
See Endemol,
The second line of reasoning focuses on the difference- in the scope of protection afforded by copyright and contract. A detailed explication of this view appears in
ProCD, Inc. v. Zeidenberg,
Rights “equivalent to any-of the exclusive rights within the general scope of copyright” are rights established by law rights that restrict the options of persons who are strangers to the author. Copyright law forbids duplication, public performance, and so on, unless the person wishing to copy or perform the work gets permission; silence means a ban on copying. A copyright is a right against the world. Contracts, by contrast, generally affect only their parties; strangers may do as they please, so contracts do not create “exclusive rights.”
Id. at 1454 (emphasis in original) (holding that a software shrinkwrap license is valid and that a claim for breach of such license/contract arising under Wisconsin law is not preempted). To support this conclusion, the Seventh Circuit posited a number of hypothetical situations in which it clearly would be inequitable to allow a promisor to breach his promise by invoking the preemption doctrine as a barrier to suit. The examples in ProCD are distinguishable from this case because they involve either conduct other than copying {e.g. theft of trade secrets or keeping copyrighted material for longer than its authorized use) or a contract that creates rights qualitatively different from the rights protected by the Act {e.g. buyer’s promise to pay seller for the purchase of information regardless whether the buyer uses the information in a manner that would infringe any right protected by the Act). Moreover, the Seventh Circuit explicitly declined to adopt “a rule that anything with the label ‘contract’ is necessarily outside the preemption clause: the variations and possibilities are too numerous to foresee.” Id. at 1455. 6
Without explicitly adopting a different or third rationale for refusing to preempt a
Judge Sand employed a similar analysis in
Lennon, supra.
The employment contract at issue in that case contained a provision prohibiting the defendant from disclosing information about his employers, plaintiff Yoko Ono Lennon and her late husband, without prior written permission. The plaintiff contended that the defendant breached this contract by disseminating information, including photographs, regarding the Lennons without first obtaining permission. Judge Sand concluded that this breach of contract claim was not preempted because the contract at issue created a right “qualitatively different” from rights created by the Copyright Act: “We read the breach of contract claim to be seeking to enforce the plaintiffs bargained-for right not to have certain information disclosed to others, rather than, as the copyright law provides, to enforce an exclusive right to reproduce, distribute and display certain works.”
Lennon,
[A]t times a breach of contract cause of action can serve as a subterfuge to control nothing other than the reproduction, adaptation, public distribution, etc. of works within the subject matter of copyright ... Although the vast majority of contract claims will presumably survive scrutiny ... nonetheless pre-emption should continue to strike down claims that, although denominated “contract,” nonetheless complain directly about the reproduction of expressive materials.
Nimmer § 1.01[B][1][a] at 1-19 and 1-22 (December 1997 release).
This Court adopts the fact-specific approach requiring an analysis of whether “the right in question is ‘infringed by the mere act of reproduction, performance, distribution or display.’ ”
National Car Rental,
Because the alleged implied-in-fact contract between Selby and defendants did not regulate the parties’ conduct beyond mere use of Selby’s ideas, the rights protected by that contract were equivalent to the exclusive rights protected by the Act. Both parts of the Del Madera test are met in this case. Accordingly, the Act preempts Selby’s claim for breach of contract. 8
CONCLUSION
For the foregoing reasons, and good cause appearing therefor, the Court DENIES defendants’ motion to dismiss plaintiffs second cause of action for violation of the Lanham Act and GRANTS the motion to dismiss with prejudice as to plaintiffs third cause of action for breach of implied-in-fact contract.
IT IS SO ORDERED.
Notes
. This conclusion renders moot defendants' arguments that the breach of contract claim is barred by the statute of limitations and that plaintiff does not adequately allege this claim against defendant Emmerich.
. Elsewhere, the Complaint alleges that in 1990 — a year before plaintiff allegedly conceived the idea for and authored the screenplay of “Doubletime” — "Selby conceived of certain ideas ('Ideas’) [phrased in the plural] for a theatrical motion picture which he had tentatively entitled 'Doubletime.’ ” Id. at ¶ 33.
. Defendants may, of course, move for summary judgment on this issue after the parties have had an opportunity to engage in meaningful discovery. However, the Court advises all parties that if they address this issue via subsequent motion, they must' demonstrate to the Court in more detail, providing specific examples and citations, just how defendants’ work either does or does not bodily appropriate plaintiff's screenplay.
. In a subsequent opinion, the
Wrench
court concluded that the plaintiffs’ claim for breach of implied-in-fact contract was also preempted.
Wrench LLC v. Taco Bell Corp.,
. Judge Sand's review of these decisions in this case is very useful.
. In a recent opinion cited by plaintiff, a court in this District employed similar reasoning in finding that a claim for breach of implied-in-fact contract under California law was not preempted:
California courts have traditionally protected the disclosure of uncopyrightable ideas on a contract theory. As the California courts recognize, such contracts only regulate relations between the contracting parties:
The rights flowing from such an agreement are qualitatively different from copyright protection, and their recognition creates no monopoly in the ideas involved. A cause of action for breach of an implied-in-fact contract bears upon the relationship between the individual parties and makes breaches of such agreements actionable between parties because of the nature of their personal relationship.
The rights asserted by a contract claim are thus not equivalent to the exclusive rights protected by the Copyright Act.
Miller v. Miramax Film Corp.,
CV 99-8526 DDP(AJWx), (C.D.Cal. Nov. 22, 1999) (Order Granting in Part and Denying in Part Defendants' Motion to Dismiss)
(citing Rokos v. Peck,
. To the extent that plaintiff cites National Car Rental for the proposition that all breach of contract claims escape preemption, he is wrong. See id. at 434 n. 6 ("Because we decide that the specific contract right [coun-terclaimant] seeks to enforce is not equivalent to any of the copyright rights, we do not need to decide whether a breach of contract claim based on a wrongful exercise of one of the exclusive copyright rights is preempted.”)
. Contrary to plaintiff's suggestion, this conclusion, which is limited to and compelled by the specific facts of this case, does not signal the "death knell to idea submission cases.” Opposition at 2. An idea submission contract could create rights that are qualitatively different from the rights protected by the Copyright Act.
See, e.g., Lennon,