IP Law Daily Amending author’s copyright infringement complaint against ‘Empire’ producers would not be futile
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Friday, August 3, 2018

Amending author’s copyright infringement complaint against ‘Empire’ producers would not be futile

By Thomas Long, J.D.

Although the author of a four-page treatment describing a concept for a television show failed to assert plausible copyright infringement claims against the producers and the creators of the popular musical drama television series "Empire," the author should have been given permission to amend his complaint, the U.S. Court of Appeals in San Francisco has held, in a split decision. All three members of the appellate panel agreed that the author did not allege facts showing that the defendants could have had access to his work or that protectable elements of the respective works were substantially similar. However, the judges disagreed as to whether amending the complaint would be futile. In the majority’s view, additional allegations regarding the similarities between the parties’ works could cure the deficiencies in the pleadings. A dissenting judge argued that the works were dissimilar as a matter of law, and that the district court acted properly in dismissing the case with prejudice (Astor-White v. Strong, August 1, 2018, per curiam).

Works at issue. Jon Astor-White wrote a treatment for a show called "King Solomon," which described a concept for a television series centered on the story of a recording industry mogul and his family. The treatment consisted of one page of suggested actors for the key roles and a little over three pages describing the characters, their relationships, and some plot details. The defendants’ drama series, "Empire," chronicled the struggles of Lucious Lyon, a rapper and music mogul who had been a drug dealer. In the United States, "Empire" is currently aired on the Fox network.

Lower court decision. Astor-White sued the defendants for copyright infringement. The defendants moved to dismiss, contending that Astor-White failed to allege facts showing that the defendants had access to his treatment and that he failed to state a viable claim because the treatment and "Empire" were not substantially similar in ways protected by the Copyright Act. The district court found that Astor-White author failed to allege facts showing that the defendants could have had access to his work or that protectable elements of the respective works were substantially similar, and it dismissed Astor-White’s pro se complaint with prejudice.

Majority opinion. In the majority’s view, Astor-White’s complaint did not contain sufficient facts to state a claim for copyright infringement, but the district court abused its discretion by denying Astor-White the opportunity to amend his complaint. Although Astor-White did not set forth facts plausibly showing that the defendants copied the protected elements in his work, he could have amended his complaint to cure this deficiency in several ways. For example, to establish striking or substantial similarity, he could have alleged facts pointing to the similarities between the parties’ respective works. To plead access, Astor-White could assert facts describing a chain of events linking the "King Solomon" treatment to the defendants. In the appellate court’s view, the district court incorrectly concluded that amendment would be futile. Therefore, the district court’s decision was affirmed in part, reversed in part, and remanded.

Concurring opinion. Circuit Judge Kim McLane Wardlaw wrote separately to explain why she thought amendment of the complaint would not be futile. First, in Judge Wardlaw’s view, the district court should have focused on similarities between the parties’ works, rather than differences, noting that it was typical for change to occur as a treatment is developed into a fully realized series. Second, Judge Wardlaw opined that the "revolutionary" nature of Astor-White’s treatment at the time it was written should have affected the similarity analysis. In the decades prior to the time Astor-White wrote his treatment, black families had rarely been depicted in dramatic series. "The rise of TV shows featuring complex, black lead characters is recent, and Astor-White created ‘King Solomon’ on the revolution’s precipice," Judge Wardlaw wrote. Given this situation, the district court mistakenly deemed Astor-White’s ideas "generic," when it would have been impossible to see a similar show at the time the treatment was written. "Discovery and the expertise of persons who understand the landscape of television at the time ‘King Solomon’ was written would have greatly informed the decision as to substantial similarity," Judge Wardlaw said.

Concurring and dissenting opinion. Circuit Judge Jacqueline Nguyen agreed with the majority that the district court properly dismissed the complaint. However, Judge Nguyen disagreed with the majority’s opinion that Astor-White should be permitted to amend his pleadings. According to Judge Nguyen, "Empire" and "King Solomon" were not substantially similar as a matter of law, and amendment would be futile. Although Astor-White might be able to plead facts that could give rise to an inference that the defendants copied his work, he would not be able to show that they engaged in unlawful appropriation, given the lack of similarity of protectable elements. The district court engaged in the proper analysis by filtering out the unprotectable elements of the works and then concluding that no articulable similarities remained. In Judge Nguyen’s view, "The overarching ideas of ‘a Black Record Business Mogul and his family’ and ‘the inner-workings of the billion dollar record business, and [its] effects on the [] family’" were not protectable, and these were the primary similarities between the parties’ works. Given that the district court and the appellate court had had the opportunity to compare the works side by side, pleading additional facts could not change the outcome regarding the lack of substantial similarity, Judge Nguyen wrote.

This case is No. 16-55565.

Attorneys: Kathryn Marie Davis (Law Office of Kathryn M. Davis) for Jon Astor White. Linda M. Burrow (Boies Schiller Flexner LLP) for Daniel William Strong a/k/a Strong.

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