Douglas Alan Stromback v. New Line Cinema

*The Honorable Gordon J. Quist, United States District Judge for the
W estern District of Michigan, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2004 FED App. 0314P (6th Cir.)
File Name: 04a0314p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
DOUGLAS ALAN STROMBACK,
Plaintiff-Appellant/
Cross-Appellee,
v.
NEW LINE CINEMA,
Defendant-Appellee/
Cross-Appellant,
LARRY HESS, et al.,
Defendants-Appellees.
X
-
-
-
->
,
-
-
-
-
-
-
-
-
N
Nos. 02-2387/2388
Appeal from the United States District Court
for the Eastern District of Michigan at Detroit.
No. 01-73898—John Corbett O’Meara, District Judge.
Argued: June 8, 2004
Decided and Filed: September 14, 2004
Before: MARTIN and SUTTON, Circuit Judges; QUIST,
District Judge.*
2 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
1Stromback also sued the three credited screenwriters, Adam Sandler,
Steven Brill, and Tim Herlihy, and two o ther individuals. Stromback
eventually dismissed the screenwriters without prejudice and did not serve
summons on the other two individuals. Therefore, the case proceeded
only against NLC.
_________________
COUNSEL
ARGUED: Andrew J. Kochanowski, SOMMERS,
SCHWARTZ, SILVER & SCHWARTZ, Southfield,
Michigan, for Appellant. Herschel P. Fink, HONIGMAN,
MILLER, SCHWARTZ & COHN, Detroit, Michigan, for
Appellees. ON BRIEF: Andrew J. Kochanowski,
SOMMERS, SCHWARTZ, SILVER & SCHWARTZ,
Southfield, Michigan, for Appellant. Herschel P. Fink,
HONIGMAN, MILLER, SCHWARTZ & COHN, Detroit,
Michigan, for Appellees.
_________________
OPINION
_________________
GORDON J. QUIST, District Judge. Plaintiff, Douglas
Alan Stromback ("Stromback"), sued Defendant, New Line
Cinema ("NLC"), and others, alleging violations of the
Copyright Act, 17 U.S.C. § 106, and the Lanham Act,
15 U.S.C. § 1125, and alleging various state law claims under
Michigan and/or California law. Stromback's claims all arise
out of his allegations that the movie "Little Nicky," which is
owned and distributed by NLC, infringes Stromback's poem
entitled "The Keeper" as well as his original treatment and
outline of a screenplay based upon "The Keeper" poem
entitled "The Keeper."1 The district court granted summary
judgment to NLC on all of Stromback's claims and dismissed

-- 1 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
3
2In its opinion, the district court stated that it was adopting
Stromb ack's description of the two works in light of the fact that it was
deciding substantial similarity at the summary judgment stage.
the case. Stromback filed this timely appeal. We affirm on
all issues.
I. FACTUAL AND PROCEDURAL BACKGROUND
In late 1998 and early 1999, Stromback, an actor, aspiring
screenwriter, and former professional hockey player, created
an original poem entitled "The Keeper." Stromback then
created an original treatment and original outline of a
screenplay based upon "The Keeper" poem and entitled each
one "The Keeper." Later, Stromback created several original
screenplays of "The Keeper." Stromback registered the poem
and a version of the screenplay with the Copyright Office.
Stromback also registered several versions of the screenplay
with the Writers Guild of America.
Stromback alleges that in early 1999, he shared the poem
and the screenplay with Larry Hess and John Apothaker to
solicit their comments on his work. According to Stromback,
Hess and Apothaker subsequently passed copies of "The
Keeper" poem and screenplay to NLC. In November 2000,
NLC released a movie it produced called "Little Nicky,"
starring Adam Sandler. Stromback alleges that after seeing
"Little Nicky" in the theater, he realized that it contained
substantial similarities to his works, including similarities in
theme, character treatment and development, idiosyncratic
character traits, and scene selection. A description of the two
works follows.2
The Keeper
The registered screenplay version of "The Keeper" is a
story about "Ted," who brings down the corrupt Governor of
4 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
3Stromback claims that the reader can infe r that the politician with
whom Ted's birth mother had the affair was Governor John's father,
making Governor Jo hn Ted's evil brother or half-brother. However, the
only basis for this inference is Stromback's subjective reading of the text.
California, "John." Racial themes are presented throughout
the story. Ted is white. Ted's adoptive mother is "Martina,"
an older black lady. Ted's grandfather, "Fred," is an 87-year-
old black man who lives in a nursing home and is apparently
losing his mental faculties. When Ted was young, Fred
taught Ted to speak in rhymes, as Ted often does throughout
the story. Fred thought that being able to rhyme was the
secret to succeeding in life because Muhammed Ali spoke in
rhymes. Fred told Ted that he was teaching Ted how to
rhyme so that Ted would deliver the family "from the gutter."
Ted regularly talks to himself in his apartment, apparently
responding in a schizophrenic manner to voices inside his
head. Ted asks Martina to explain the voices and why he is
troubled but she is reluctant to tell him the truth, which is that
he was abandoned in a dumpster as a baby by his birth
mother. Eventually, Ted's mother told him that they found
him on church grounds and that his mother was an eighteen
year old girl who was having an affair with a politician.
The story opens with Ted starting a new job at the "national
paper." Ted is hired to work in the basement of the building
organizing old files. Ted's boss, "Dave," calls the basement
"the cave" or "the dungeon." Ted works in the evening and
often sleeps during work. Ted is attracted to a female writer
named "Sue." Ted concocts and carries out a plan to
approach Sue in the dark and reveal his feelings toward her
through a rhyme. Sue figures out that Ted was the person who
approached her in the dark but she won't date him because he
is "totally weird."
Shortly after he begins working at the national paper, Ted
begins to obsess about Governor John.3 Governor John is

-- 2 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
5
portrayed as a power hungry politician who does no real work
and whose ambition is to become president and take over the
world. Ted believes that Governor John is "cocky and
arrogant" as well as evil, and at various times Ted refers to
Governor John as the devil. Ted begins a campaign against
Governor John by sending anonymous rhyming riddles to the
national paper that the newspaper prints in its editorial page.
Eventually it is revealed that Ted has been reading about a
"Jokela murder case," in which a reporter ("Jokela") was
murdered in the same basement in which Ted now works.
Jokela discovered that the then-secretary of state (Governor
John's father) was involved in a cult having "some thing to do
with the devil." Governor John's father was the prime suspect
in the murder but "got off the hook and the case never went to
trial." He went on to have a distinguished career as Governor.
Ted knows that Governor John's father was responsible for
the murder and includes clues about it in his riddles.
Governor John reads the riddles and eventually catches on
that the author is out to get him. The Governor and his
henchmen decide to kill "that rhyming dude." Ted reveals
himself to the Governor and dares him to "get me if you can."
Governor John arranges for three individuals to find and
murder Ted at the national paper. However, Ted sets a trap in
which he uses his "good friend," "Scott," to trick the hit-man
into thinking that Scott is actually Ted. The hit-man ends up
killing Scott. Having video-taped the murder, Ted tells a
dying Scott: "I needed you, you were a good friend, but
everybody needs a ladder to get to the top. You're my ladder
scott [sic]."
Ted shows the tape of the murder to the police, who
eventually link the murder to Governor John. The story ends
with the Governor going to jail and Ted being elected as the
Governor of California. On election night Sue goes to Ted's
hotel room, where he rapes her. Sue has no recourse because
Ted now has the power. Ted calls Sue a "bitch" as she leaves.
6 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
Little Nicky
Little Nicky is a "comedy" about the Devil, "Satan," and his
three sons: "Casius," the strong, tough son; "Adrian," the
smart, ruthless son; and "Nicky," the weaker, sweet son, who
also has a speech impediment caused by his brother hitting
him in the face with a shovel. Adrian and Casius frequently
pick on Nicky and "mind wrestle" with him, causing him to
do or say things against his will. The grandfather, "Lucifer"
(Rodney Dangerfield), appears occasionally but does not
really interact with Nicky.
The movie opens with Satan trying to decide if he should
retire after 10,000 years of rule. If he does, one of his sons
would take over Hell. Casius and Adrian both want the job.
Nicky does not want it and prefers that his father keep the job.
Satan decides to keep the job and rule for another 10,000
years in order to maintain the balance between good and evil
(he does not believe that his sons are capable of doing this).
Casius and Adrian are furious at this decision and plan to
escape to Earth, where they will try to corrupt as many souls
as possible (to threaten the balance between good and evil) in
their quest to assume control. During their escape, Casius and
Adrian travel through a wall of fire, by which damned souls
are intended to fall into, but not leave, Hell. Adrian and
Casius cause the wall of fire to freeze and a logjam of souls
ensues outside the wall of fire. Without new souls entering,
Satan begins to decompose. His only hope is to send Nicky
to Earth to force his brothers to drink from a magic flask, in
which they will be trapped. Once he has his brothers inside
the flask, Nicky must pass through the wall of fire and return
to Hell, which will save Satan.
Nicky travels to New York City, where Satan's friend, a
talking dog, "Beefy," serves as Nicky's guide. Nicky is also
assisted by two cult-worshiping "groupies" named "John" and
"Pete." Beefy, John, and Pete all want Nicky to "release his
inner evil" in order to overpower Casius and Adrian. Nicky

-- 3 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
7
has a difficult time finding his brothers because they hide by
randomly "possessing" humans. Casius possesses the Mayor
of New York and lowers the drinking age from 21 to 10,
causing chaos. All three of them have a difficult time
adapting to Earth's cold weather.
While on Earth, Nicky meets and falls in love with a
woman named "Valerie." During a chance encounter, Adrian
mind wrestles with Nicky and causes him to insult Valerie.
However, Nicky wins back Valerie's affection by telling her
the truth about his family and mission on Earth. During the
story, Nicky is killed several times (e.g., by a train or bus) and
is sent back to Hell, where he is re-dispatched to Earth. The
final time, Nicky dies trying to save Valerie and goes to
Heaven. There, he meets an angel named "Holly," who turns
out to be his mother. Holly tells Nicky that she met Satan at
a "Heaven and Hell Mixer." Holly tells Nicky releasing his
inner good is the key to victory over his brothers. Holly also
gives Nicky a magic sphere from God for Nicky to use when
it is time.
Nicky manages to trap Casius in the magic flask, but
Adrian has assumed the throne of Hell and has caused Hell to
rise through Central Park in New York. At the stroke of
midnight, all of New York's souls will be damned and belong
to Adrian in Hell. Nicky uses the magic sphere, releasing
"good" versus "evil." Nicky smashes the magic sphere and
Ozzy Osbourne (a rock star with a reputation for biting the
heads off bats) appears and bites off Adrian's head (who
appears in the form of a bat) and spits it into the magic flask.
Nicky then commits one last superficially bad act to ensure
that he will be sent to Hell. Valerie tells Nicky that she loves
him and then smashes him on the head with a rock (out of
love) to kill him and send him back to Hell. Satan is saved
and the balance between good and evil is restored. Satan
sends Nicky back to Earth to be with Valerie and they have a
son and live happily ever after.
8 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
4In addition to alleging that "Little Nicky" infringed "The Keeper,"
Stromback also initially alleged that the movie "Mr. Deeds" was an
infringing work. Stromback eventually dropped the allegation regarding
"M r. Deeds."
Stromback filed his complaint on October 15, 2001, and
filed an amended complaint in December 2001.4 Stromback's
amended complaint alleged claims for copyright
infringement; reverse passing off in violation of the Lanham
Act; commercial misappropriation; breach of quasi contract;
misappropriation of trade secrets; breach of the implied duty
of good faith and fair dealing; unfair competition/unjust
enrichment; and interference with prospective economic
advantage. On September 13, 2002, NLC, the only remaining
defendant, moved for summary judgment. At that time, the
case had been pending for about a year and Stromback had
not sought a Rule 16 conference with the district court, nor
had he sought any discovery. In his response, Stromback
argued that summary judgment should be denied because he
needed to conduct discovery on whether the various
screenplays leading up to the final product (the movie)
infringed on "The Keeper" poem or screenplay. The district
court found that the movie was the only relevant work
because only the movie, and not the various versions of the
screenplays leading up to the movie, were published to the
public and because Stromback alleged in his amended
complaint only that the movie was an infringing work. The
district court concluded that NLC was entitled to summary
judgment on the copyright infringement and Lanham Act
claims because no reasonable jury could find that "Little
Nicky" is substantially similar to "The Keeper" poem or
screenplay. The district court also concluded that summary
judgment was proper on Stromback's state law claims on the
basis that they are preempted by § 301 of the Copyright Act.

-- 4 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
9
II. ANALYSIS
A. Standard of Review
Stromback contends that the district court erred in granting
summary judgment to NLC on his various claims. In
reviewing a district court's grant of summary judgment, this
Court applies a de novo standard. See E.I. Du Pont De
Nemours & Co. v. Okuley, 344 F.3d 578, 584 (6th Cir. 2003).
Summary judgment is proper only if there is no genuine issue
as to any material fact and the moving party is entitled to
judgment as a matter of law. See Fed. R. Civ. P. 56(c). The
proper inquiry is whether the evidence is such that a
reasonable jury could return a verdict for the plaintiff. See
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.
Ct. 2505, 2512 (1986).
B. Copyright Infringement Claim
The Copyright Act provides protection for original works
of authorship expressed in various media. 17 U.S.C. §§ 101-
1332. Subject to certain exceptions not applicable here, the
owner of a copyright has the exclusive rights (1) to reproduce
the copyrighted work; (2) to prepare derivative works; (3) to
distribute copies; (4) to perform publicly a copyrighted work;
and (5) to display publicly a copyrighted work. 17 U.S.C.
§ 106. A plaintiff may bring a claim against a person who
infringes any of the plaintiff's exclusive rights in a copyright
under § 106 by demonstrating two elements: "(1) ownership
of a valid copyright; and (2) copying of constituent elements
of the work that are original." Feist Publ'ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296 (1991);
accord Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003).
The parties do not dispute Stromback's ownership of a valid
copyright in "The Keeper" poem and screenplay. Thus,
copying is the only issue in dispute.
10 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
Since direct evidence of copying is rarely available, a
plaintiff may establish "an inference of copying by showing
(1) access to the allegedly-infringing work by the
defendant(s) and (2) a substantial similarity between the two
works at issue." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir.
1999); see also Arica Inst., Inc. v. Palmer, 970 F.2d 1067,
1072 (2d Cir. 1992). "Access is essentially 'hearing or having
a reasonable opportunity to [view] the plaintiff['s] work and
thus having the opportunity to copy.'" Ellis, 177 F.3d at 506
(quoting Tree Publ'g Co. v. Warner Bros. Records, 785 F.
Supp. 1272, 1274 (M.D. Tenn. 1991)). In Ellis, we observed
that in some cases the relationship between the degree of
proof required for similarity and access may be inversely
proportional: where the similarity between the two works is
strong, less compelling proof of access may suffice, and vice-
versa. Id. at 507. See Three Boys Music Corp. v. Bolton, 212
F.3d 477, 485 (9th Cir. 2000) (stating that under the "inverse
ratio rule," a lower standard of proof of similarity is required
where a high degree of access is shown); Arnstein v. Porter,
154 F.2d 464, 469 (2d Cir. 1946) (stating that "a case could
occur in which the similarities were so striking that we would
reverse a finding of no access, despite weak evidence of
access (or no evidence thereof other than the similarities)").
For purposes of its motion for summary judgment, NLC
conceded the issue of access, electing to focus solely on the
issue of substantial similarity of the two works.
In ruling on NLC's motion, the district court observed,
correctly, that the Sixth Circuit had not formally adopted a
specific test or approach for determining substantial similarity
in copyright cases. Drawing on statements in Diffie as well
as prior decisions from the Eastern District of Michigan, the
district court applied the "ordinary observer" test, which
allows the trier of fact to gauge his "net impression" of the
two works by conducting a side-by-side comparison without
the benefit of expert testimony or dissection. (Dist. Ct. Op.
at 8.) The district court rejected Stromback's argument that it
should apply the two-part test employed by the Ninth Circuit,

-- 5 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
11
which consists of an extrinsic test and an intrinsic test, see Sid
& Marty Krofft Television Prods., Inc. v. McDonald's Corp.,
562 F.2d 1157, 1164 (9th Cir. 1977), although the district
court did state that summary judgment would be improper at
that stage if the Sixth Circuit employed the "extrinsic" test
because expert discovery had not occurred. Subsequent to the
district court's opinion and order granting summary judgment
and dismissing the case, this court adopted a two-part test in
Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003), which follows
the test employed by the D.C. Circuit in Sturdza v. United
Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002). We stated
that "the first step 'requires identifying which aspects of the
artist's work, if any, are protectible by copyright,' [and] the
second 'involves determining whether the allegedly infringing
work is"substantially similar" to protectible elements of the
artist's work.'" Kohus, 328 F.3d at 855 (quoting Sturdza).
This test is really just a refinement of the ordinary observer
test that, as its initial step, parses from the work the elements
neither afforded copyright protection nor properly considered
in the ordinary observer test. "The essence of the first step is
to filter out the unoriginal, unprotectible elements–elements
that were not independently created by the inventor, and that
possess no minimal degree of creativity, through a variety of
analyses." Id. (citation omitted). Our test is similar to the
Ninth Circuit's test, because the first part, like the Ninth
Circuit's extrinsic test, requires a determination of only the
expressive elements of a work, while the second part, like the
Ninth Circuit's intrinsic test, asks whether the ordinary,
reasonable observer would find the works, taken as a whole,
to be substantially similar. Murray Hill Publ'ns, Inc. v.
Twentieth Century Fox Film Corp., 361 F.3d 312, 318 (6th
Cir. 2004).
However, significant differences remain in both parts.
In particular, we apply a more stringent standard
regarding when to allow expert testimony on the first part
of the test. Also, not having adopted the eight Kouf
factors [Kouf v. Walt Disney Pictures & Television, 16
12 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
F.3d 1042 (9th Cir. 1994)], the first part of our test
remains more free in form than the Ninth Circuit's
extrinsic test.
Id. In addition, for purposes of summary judgment, the Ninth
Circuit considers only the extrinsic test, while the intrinsic
test is reserved for the jury. See Kouf, 16 F.3d at 1045 ("A
plaintiff avoids summary judgment by satisfying the extrinsic
test which makes similarity of the works a triable issue of
fact."). In contrast, a court considers both parts of our test in
determining substantial similarity on a motion for summary
judgment. See Kohus, 328 F.3d at 857-58 (discussing the
district court's analysis on remand under both prongs of the
test). This remains consistent with our prior observation that
while summary judgment in favor of a defendant in a
copyright case is a practice that should be used sparingly, in
an appropriate case, "a court may compare the two works and
render summary judgment for the defendant on the ground
that as a matter of law a trier of fact would not be permitted
to find substantial similarity." Wickham v. Knoxville Int'l
Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984)
(citations omitted); accord Kohus, 328 F.3d at 853.
Our decision in Kohus answers one of Stromback's central
arguments on appeal, namely, that the district court erred by
conducting a side-by-side comparison of the two works rather
than applying the extrinsic/intrinsic test or some other test
that allows for analytic dissection of what Stromback
characterizes as "complex copyright subject matter." Though
the district court failed to apply the proper two-part test, we
need not remand the case because the issue presented is one
of law. See, e.g., Chase Manhattan Bank, N.A. v. Am. Nat'l
Bank & Trust Co., 93 F.3d 1064, 1072 (2d Cir. 1996) ("An
appellate court has the power to decide cases on appeal if the
facts in the record adequately support the proper result or if
the record as a whole presents no genuine issue as to any
material fact. . . . Thus, if we find that a party must prevail as
a matter of law, a remand is unnecessary.") (internal quotation

-- 6 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
13
5Although the district co urt did not purport to apply the two-part test,
it in fact did so as part of its analysis when it observed that many of the
alleged similarities, such as the concepts of Hell and the devil, are too
com mon place and not pro tected.
marks and citations omitted); Trierweiler v. Croxton &
Trench Holding Corp., 90 F.3d 1523, 1539 (10th Cir. 1996)
("In the present case, the debate is purely legal, and remand
on this issue is unnecessary"). That is, the district court
applied the ordinary observer test – the second part of the
Kohus test – without first filtering out the unoriginal,
unprotectible elements of "The Keeper" poem and screenplay.
To the extent that the district court considered both
protectible and unprotectible elements of Stromback's works,
the inquiry for purposes of this appeal remains the same –
whether the district court's conclusion of no substantial
similarity was correct.5
Nor is remand required for consideration of expert
testimony, as the district court believed might be the case
under the extrinsic/intrinsic test. Even in the Ninth Circuit
expert testimony is not a requisite for a copyright
infringement case. See Apple Computer, Inc. v. Microsoft
Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (stating that a court
may use expert testimony, "if necessary," to determine
whether any of the allegedly similar features are subject to
copyright protection). Our test "appl[ies] a more stringent
standard regarding when to allow expert testimony on the first
part of the test." Murray Hill Publ'ns, Inc., 361 F.3d at 318.
We remanded in Kohus in part because the copyright involved
a latch for a portable children's play yard, and we thought that
expert testimony would be necessary to determine whether
certain elements of such a latch should be excluded from the
substantial similarity analysis. See Kohus, 328 F.3d at 856.
Whether expert testimony should be allowed in a particular
case remains a matter committed to the discretion of the trial
court under Federal Rule of Evidence 702 if such testimony
14 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
"will assist the trier of fact to understand the evidence or to
determine a fact in issue." However, where, as here, the
subject matter is not complex or technical, such as a computer
program or a functional object, see, e.g., Gates Rubber Co. v.
Bando Chem. Indus., Ltd., 9 F.3d 823, 834-35 (10th Cir.
1993) (noting that in most cases involving computer programs
expert testimony will be helpful to the court in applying an
abstractions test), but instead involves a literary work aimed
at a general audience, expert testimony will seldom be
necessary to determine substantial similarity. See Nichols v.
Universal Pictures Corp., 45 F.2d 119, 123 (1930) (Hand,
Learned) ("[Expert testimony] ought not to be allowed at all;
and while its admission is not a ground for reversal, it
cumbers the case and tends to confusion, for the more the
court is led into the intricacies of dramatic craftsmanship, the
less likely it is to stand upon the firmer, if more naive, ground
of its considered impressions upon its own perusal.");
Kindergartners Count, Inc. v. Demoulin, 249 F. Supp. 2d
1214, 1232 (D. Kan. 2003) ("Unlike technical computer
programs, the trier of fact does not need an expert to compare
two literary works that are expressed in simple English.");
Costello v. Loew's Inc., 159 F. Supp. 782, 789 (D.D.C. 1958)
("No amount of expert or lay testimony as to fancied
similarities could change the obvious content of the exhibits
before the court . . . . Nor could expert testimony affect the
spontaneous and immediate impression of the plaintiff's and
defendant's literary works upon the mind of the ordinary
observer."). Therefore, we reject Stromback's suggestion that
expert testimony is necessary in this case.
1. Filtering of Unprotected Elements
Although there is no clear line separating protected from
nonprotected work, two principles help to guide that
determination in this case. See Kohus, 328 F.3d at 855-56.
First, copyright protection extends only to expression of ideas
and not to ideas themselves. 17 U.S.C. § 102(b); Mazer v.
Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 470 (1954) ("Unlike

-- 7 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
15
a patent, a copyright gives no exclusive right to the art
disclosed; protection is given only to the expression of the
idea – not the idea itself."). "Ideas are free to the world, and
one person's idea can be appropriated by another with
impunity." Taylor v. Metro-Goldwyn-Mayer Studios, 115 F.
Supp. 156, 157 (S.D. Cal. 1953). "[N]o author may copyright
facts or ideas. The copyright is limited to those aspects of the
work – termed "expression" – that display the stamp of the
author's originality." Feist Publ'ns, 499 U.S. at 350, 111 S.
Ct. at 1290 (quoting Harper & Row, Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 547, 105 S. Ct. 2218, 2224
(1985)) (internal quotation marks omitted). The abstraction
test articulated by Judge Learned Hand in Nichols v.
Universal Pictures Corp., 45 F.2d 119 (1930), provides some
guidance in divining protected expression:
Upon any work, and especially upon a play, a great
number of patterns of increasing generality will fit
equally well, as more and more of the incident is left out.
The last may perhaps be no more than the most general
statement of what the play is about, and at times might
consist only of its title; but there is a point in this series
of abstractions where they are no longer protected, since
otherwise the playwright could prevent the use of his
"ideas," to which, apart from their expression, his
property is never extended.
Id. at 121. The test itself does not identify protectible
elements of a work, but instead is a tool for accomplishing
that task. Kohus, 328 F.3d at 855.
Second, the principle of scenes a faire excludes copyright
protection for "incidents, characters or settings which are as
a practical matter indispensable, or at least standard, in the
treatment of a given topic." Atari, Inc. v. N. Am. Philips
Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982);
see also 4 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright ("Nimmer") § 13.03[F][3] (2004). For example,
16 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
parties, alcohol, co-eds, and wild behavior are natural
elements in a story about a college fraternity. Similarly,
"[e]lements such as drunks, prostitutes, vermin and derelict
cars would appear in any realistic work about . . . policemen
in the South Bronx," and therefore are not afforded copyright
protection. Walker v. Time Life Films, 784 F.2d 44, 50 (2d
Cir. 1986); see also Murray Hill Publ'ns, Inc, 361 F.3d at
319-20 (citing examples).
Stromback relies upon numerous examples to support his
claim of substantial similarity between the works. As
Stromback concedes, however, many of these elements are
superficial, e.g., the Hell/dungeon setting, the sequence of
certain events (main characters leaving Hell, battling their
brother, the attempted killing of the main character), racial
allusions and a love interest. These are common themes and
ideas throughout literature and are beyond any level of
abstraction at which copyright protection might begin to
attach. See Cavalier v. Random House, Inc., 297 F.3d 815,
823 (9th Cir. 2002) ("Familiar stock scenes and themes that
are staples of literature are not protected."). The same is true
for character traits or descriptions such as "whacked," "odd,"
"misfit," "evil," or "conflicted"; themes, such as saving the
world, the battle between good and evil, sibling rivalry or
familial secrets and issues, and racial issues; scenes, such as
parties; concepts, such as a dam or barrier between Earth and
Hell; and plots, such as foiling the antagonist's attempt to rule
the world. See generally Nichols, 45 F.2d at 122 ("A comedy
based upon conflicts between Irish and Jews, into which the
marriage of their children enters, is no more susceptible of
copyright than the outline of Romeo and Juliet."); Whitehead
v. Paramount Pictures Corp., 53 F. Supp. 2d 38, 49 (D.D.C.
1999) ("The general concept of an interracial relationship . . .
is not copyrightable.") (citing Matthews v. Freedman, 157
F.3d 25, 27 (1st Cir. 1998)). These elements are too general
to qualify for copyright protection.

-- 8 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
17
2. Comparing the Works
After filtering out the unprotectible elements such as ideas
and scenes a faire, the final step is to determine whether the
allegedly infringing work is "substantially similar" by
comparing the two works. Wickham, 739 F.2d at 1097.
Substantial similarity exists where "the accused work is so
similar to the plaintiff's work that an ordinary reasonable
person would conclude that the defendant unlawfully
appropriated the plaintiff's protectible expression by taking
material of substance and value." Country Kids 'N City
Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288 (10th Cir. 1996)
(internal quotation marks and citation omitted). In Murray
Hill we wrote:
"A story has a linear dimension: it begins, continues, and
ends. If a defendant copies substantial portions of a
plaintiff's sequence of events, he does not escape
infringement by adding original episodes somewhere
along the line." "The misappropriation of even a small
portion of a copyrighted work may constitute an
infringement under certain circumstances." "Even if a
copied portion be relatively small in proportion to the
entire work, if qualitatively important, the finder of fact
may properly find substantial similarity." "No plagiarist
can excuse the wrong by showing how much of his work
he did not pirate."
361 F.3d at 320 (citations omitted). In a case such as this, it
is appropriate to examine the theme, characters, plot,
sequence, pace, and setting for similarities. Williams v.
Crichton, 84 F.3d 581, 588 (2d Cir. 1996). "However,
'random similarities scattered throughout the works' may be
discounted." Murray Hill Publ'ns, Inc., 361 F.3d at 320
(quoting Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th
Cir. 1984)). In the end, the question is whether, based upon
his "net impression" of the works' expressive elements, the
18 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
6The district court and the parties state that the Governor was
respo nsible for the murder, but the text of "The K eeper" suggests that the
Governor's father committed the murder ("Well the big d eal is that a
prim e suspect in the case was the secretary of the state. . . . W ell, the
secretary of states [sic] kid is now the governor. The one that will be the
next president."). (J.A. at 334-35.)
ordinary lay observer would find them substantially similar to
one another. See, e.g., Ellis, 177 F.3d at 506 n.2.
Having reviewed "The Keeper" poem and screenplay and
"Little Nicky," we are unable to find any similarity between
the works other than at perhaps the most superficial level.
Casting aside the many stock themes, scenes a faire, and raw
ideas cited by Stromback, we are left with two works that are
completely dissimilar in both their overall look and feel and
in their constituent expressive elements.
The respective themes, plots, moods, and settings of the
works are dissimilar. "The Keeper" is a dark, disturbing, and
humorless story about real people. Its theme is difficult to
discern, but it appears to be that power and success in life can
be attained through rhyming. The story takes place in
California, and much of it occurs in the basement of the
national paper where Ted works. While at the national paper
Ted is attracted to a woman, Sue, who spurns him because he
is "weird." Ted dislikes the corrupt Governor and at some
point figures out that the Governor was connected with a cult
of devil worshipers and had something to do with a murder.
In an effort to bring down the Governor, Ted sends a series of
rhyming clues to the national paper that ultimately reveal the
Governor's connection to the murder.6 Ted refers to the
Governor as "evil" and "the antichrist" several times
throughout the story, but this is only his use of a metaphor, as
there is never any suggestion that Governor John actually is
the devil. The Governor eventually figures out that Ted is the
"rhyming dude" and sends henchmen to kill Ted. Ted betrays
his friend, Scott, by leading a henchman to believe that Scott

-- 9 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
19
is Ted. After the henchman shoots Scott, Ted reveals to Scott
that he used Scott as his "ladder." In the end, Ted becomes
Governor and uses his power to exact revenge on Sue by
raping her.
In contrast, "Little Nicky" is a comedy about the devil and
his three sons. The predominant theme in "Little Nicky" is
that good should and will prevail over evil. The story takes
place in Hell, New York City, and Heaven. Little Nicky, the
youngest of the three sons, is sent to Earth to bring back his
two brothers, Casius and Adrian, who have escaped from Hell
as part of their plan to assume control. Nicky must bring his
brothers back to Hell in order to restore the balance of good
and evil and to save his father, Satan. On Earth, Nicky meets
and falls in love with Valerie. After dying and returning to
Hell several times, Nicky ends up in Heaven and discovers
that his mother is an angel. Just as Adrian is about to prevail
and claim all of the souls of New York City, Nicky returns to
Earth and, using the magic sphere his mother gave him,
bottles Adrian in the magic flask. After Nicky returns his
brothers to Hell, Satan sends Nicky back to Earth, and Nicky
and Valerie have a son and live happily ever after.
The main characters, Ted and Nicky, are markedly
different. Ted is portrayed as a slick and scheming character
whose most prominent trait is that he speaks in rhymes, often
as a means to deceive and lure women. For example, in one
scene, Ted tells a waitress that he would like her "ass," but
when she responds in apparent disgust he says "I would like
your bass, bass ale." Ted reveals his evil side at the end of the
story by betraying his friend and raping the woman who
rejected him. In contrast, as a son of the devil, Nicky is
unexpectedly portrayed as sweet, good-hearted, and naive.
Nicky succeeds in the end by using his inner good and
ultimately saves the world by restoring the balance of good
and evil.
20 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
The list of similarities cited by Stromback is extensive, but
nonetheless insufficient to render the two works substantially
similar. Some of the alleged similarities do not exist, others
are overstated, and, to the extent there are similarities, they
are simply too general or tenuous to meet the legal standard
for similarity. By way of example, Stromback says that Ted
is shown as a riddler and a punner and claims that the same
"wordplay" occurs in Nicky's character development, but this
is simply not true. Unlike Ted, Nicky does not speak in
rhymes or use wordplay. Likewise, Stromback claims that
Ted and Nicky both assume the same burden – saving the
world and souls. But, a fair read of "The Keeper" shows that
Ted's true concern is his own self-interest. While there are
some similarities – for example, references to Hell and the
devil and interracial families – Stromback's claim fails
because the similar details are trivial or scattered details. See
Williams, 84 F.3d at 590-91. "Where as here, the slight
similarities are not thematically related, the whole is no
greater than the sum of the parts." Murray Hill Publ'ns, Inc.,
361 F.3d at 325. Thus, the district court was correct in
concluding that a reasonable person could not conclude that
NLC copied protected expression from "The Keeper."
In spite of the absence of similar protectible elements in
both works, Stromback contends that NLC's admission of
access precludes a finding of no substantial similarity as a
matter of law. This argument is easily rejected, because
without substantial similarity, there can be no inference of
copying, and thus, no infringement. In Wickham v. Knoxville
International Energy Exposition, Inc., 739 F.2d 1094 (6th Cir.
1984), we held that because there was no substantial
similarity, access was irrelevant: "No amount of proof of
access will suffice to show copying if there are no
similarities." Id. at 1097; accord Arnstein v. Porter, 154 F.2d
464, 469 (2d Cir.1946) ("Of course, if there are no
similarities, no amount of evidence of access will suffice to
prove copying.").

-- 10 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
21
Finally, Stromback contends that the district court erred in
granting summary judgment to NLC because it should have
allowed discovery on the underlying and prior versions of the
screenplay in order to permit Stromback to fully develop his
claim. Stromback points out that he alleged not only that the
movie "Little Nicky" infringed his copyright in "The Keeper,"
but also that NLC substantially copied and prepared versions
of "The Keeper." Stromback contends that discovery was
necessary to this portion of his claim and was relevant to
address the question of how the movie "Little Nicky" was
prepared in light of NLC's election not to rely upon
independent creation as a defense. The district court rejected
Stromback's request because only the movie was published to
the public and because Stromback alleged in his amended
complaint only that the movie was an infringing work. We
think that this was the correct result. In deciding
infringement claims, courts have held that only the version of
the alleged infringing work presented to the public should be
considered. See Davis v. United Artists, Inc., 547 F. Supp.
722, 724 n.9 (S.D.N.Y. 1982) ("Since the ultimate test of
infringement must be the film as produced and broadcast, we
do not consider the preliminary scripts."). "Courts have
routinely rejected requests to consider earlier drafts of the
screenplay. Consideration of earlier versions of the
screenplay is too unreliable in determining substantial
similarity." Walker v. Time Life Films, Inc., 615 F. Supp.
430, 435 (S.D.N.Y. 1985); see also Madrid v. Chronicle
Books, 209 F. Supp. 2d 1227, 1234 (D. Wyo. 2002) (quoting
Walker and refusing to grant the plaintiff's request for
discovery on the development of the defendant's movie
because such discovery would be "pointless"). As the Madrid
court noted, the "intermediate copying" concept has only been
recognized in a very limited application to cases involving
computer programs – because of the complex nature of the
subject. Id. at 1236. Because this is not such a case, there is
no need to apply the concept. Furthermore, in spite of
Stromback's assertion to the contrary, the district court's
assessment of the amended complaint was accurate because
22 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
Stromback only alleged that the movie "Little Nicky"
infringed "The Keeper" poem and screenplay.
C. Lanham Act Claim
Stromback also contends that the district court erred in
granting summary judgment on his claim for reverse passing
off under Section 43 of the Lanham Act. Where a plaintiff's
Lanham Act claim parallels his copyright infringement claim,
a finding of no substantial similarity on the copyright claim
precludes the Lanham Act claim. Mihalek Corp. v. Michigan,
814 F.2d 290, 296 (6th Cir. 1987); see also Litchfield v.
Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984) (stating that
"without substantial similarity there can be no claim for
reverse passing off" under the Lanham Act). Stromback
makes no attempt to distinguish his Lanham Act claim from
his copyright infringement claim or to explain how there
could be a likelihood of confusion when the two works are
not substantially similar. Therefore, summary judgment was
proper.
D. State Law Claims
The district court concluded that NLC was entitled to
summary judgment on all of Stromback's state law claims on
the ground that they were subject to copyright preemption.
On appeal, Stromback takes issue only with the district court's
dismissal of his claims for commercial misappropriation,
misappropriation of trade secrets, and interference with
prospective economic advantage claims.
Section 301 of the Copyright Act provides that:
On and after January 1, 1978, all legal or equitable
rights that are equivalent to any of the exclusive rights
within the general scope of copyright as defined by
section 106 in works of authorship that are fixed in a
tangible medium of expression and come within the

-- 11 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
23
subject matter of copyright . . . are governed exclusively
by this title. Thereafter, no person is entitled to any such
right or equivalent right in any such work under the
common law or statutes of any State.
17 U.S.C. § 310(a). A state law claim will be preempted
under Section 301 where two requirements are met. First, the
work must come within the scope of the "subject matter of
copyright" as set forth in Sections 102 and 103 of the
Copyright Act. Wrench LLC v. Taco Bell Corp., 256 F.3d
446, 453 (6th Cir. 2001). Second, the rights granted under
state law must be equivalent to any of the exclusive rights
within the scope of federal copyright protection. Id. These
requirements are often referred to as the "subject matter
requirement" and the "general scope" or "equivalency"
requirement. Id. (citing Nat'l Basketball Ass'n v. Motorola,
Inc., 105 F.3d 841, 848 (2d Cir. 1997)).
1. Subject Matter Requirement
The subject matter requirement of Section 301 is satisfied
if a work fits within the general subject matter of Sections
102 and 103 of the Copyright Act, regardless of whether it
qualifies for copyright protection. Baltimore Orioles, Inc. v.
Major League Baseball Players Ass'n, 805 F.2d 663, 676 (7th
Cir. 1986) (quoting H.R. Rep. No. 94-1476, at 131, reprinted
in 1976 U.S.C.C.A.N. 5659, 5747). In Wrench, this court
joined several other circuits in holding that for purposes of
preemption, the scope of the Copyright Act's subject matter
is broader than the scope of its protection. Wrench, 256 F.3d
at 454-55. Stromback's claims meet the subject matter
requirement because "The Keeper" poem and screenplay fall
squarely within the range of materials protected by the
Copyright Act; that is, they are both original literary works
"fixed in [a] tangible medium of expression." 17 U.S.C.
§ 102(a). Stromback does not dispute that the poem and
screenplay meet the subject matter requirement, but he does
argue that his commercial misappropriation claim avoids
24 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
preemption on this basis because it relates to "the time, effort,
and money that [Stromback] expended" as well as NLC's
unauthorized "uses" of Stromback's efforts. (Appellant's Br.
at 55-56.) This argument ignores the principle cited above,
that the subject matter of copyright is broader than its
protections. Thus, Stromback's citation to Feist Publications,
Inc. v. Rural Telephone Service Co., 499 U.S. 338, 111 S. Ct.
1282 (1991), for the proposition that there is no copyright
protection for "sweat of the brow" efforts is not germane to
the subject matter inquiry. Moreover, even assuming that
Stromback's time, effort, and money constitute a separate
element of his claim, it would still be within the subject
matter of copyright because the claim is based upon NLC's
unauthorized use of "The Keeper" poem and screenplay. Cf.
Nat'l Basketball Ass'n, 105 F.3d at 848 ("We hold that where
the challenged copying relates in part to the copyrighted
broadcasts of the games, the subject matter requirement is met
as to both the broadcasts and games."). Moreover,
Stromback's argument that Section 106 of the Copyright Act
does not grant a copyright owner the exclusive right to "use"
a work is sophistry. See Alcatel USA, Inc. v. DGI Techs.,
Inc., 166 F.3d 772, 787 (5th Cir. 1999) ("Use of a copyrighted
work by one who does not own the copyright constitutes
infringement under federal law, provided the use falls within
the scope of a copyright owner's exclusive rights.") (footnote
omitted).
2. Equivalency Requirement
Courts analyze equivalency by applying "a functional test"
to determine whether the state law right at issue is equivalent
to any of the exclusive rights under Section 106 of the
Copyright Act. Data Gen. Corp. v. Grumman Sys. Support
Corp., 36 F.3d 1147, 1164 (1st Cir. 1994). In Wrench, we
stated:
Equivalency exists if the right defined by state law
may be abridged by an act which in and of itself would

-- 12 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
25
infringe one of the exclusive rights. Conversely, if an
extra element is required instead of or in addition to the
acts of reproduction, performance, distribution or display
in order to constitute a state-created cause of action, there
is no preemption, provided that the extra element
changes the nature of the action so that it is qualitatively
different from a copyright infringement claim.
256 F.3d at 456 (citation omitted). See also Summit Mach.
Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1440
(9th Cir. 1993). The existence of an extra element precludes
preemption only where the element changes the nature, rather
than the scope, of the action. Data Gen., 36 F.3d at 1164-65.
a. Commercial Misappropriation
Stromback alleges in his commercial misappropriation
claim that Stromback "expended significant time, effort, and
money" to create "The Keeper" screenplay with "the
expectation that he would reap the benefits of the production
of the screenplay into a film for commercial sale" and that
NLC misappropriated the poem and screenplay, including its
characters, scenes and events and will reap the benefits that
Stromback was expecting. (1st Am. Compl. ¶¶ 48-49, J.A. at
242.) The essence of this claim is that NLC copied portions
of "The Keeper" poem and screenplay. Courts faced with
similar misappropriation claims have held them to be
preempted by the Copyright Act because they allege an act
that infringes upon one of the exclusive rights set forth in
Section 106. See, e.g., Daboub v. Gibbons, 42 F.3d 285, 289
(5th Cir. 1995) (concluding that the plaintiffs' claims,
including misappropriation, were preempted because they
merely alleged wrongful copying, distribution and
performance of lyrics without alleging an extra element
rendering the claim different from a copyright infringement
claim); Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir. 1985)
(finding "no distinction" between the state law right asserted
in the misappropriation claim and the exclusive rights granted
26 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
under the Copyright Act); Artie Fields Prods., Inc. v. Channel
7 of Detroit, Inc., No. 94-CV-70730-DT, 1994 WL 559331,
at *2-3 (E.D. Mich. June 10, 1994) (holding that the plaintiff's
misappropriation and unfair competition claims grounded
solely in the copying of the plaintiff's protected expression
were preempted); 1 Nimmer § 1.01[B][1][f][iii] ("Except for
a few stray rulings, legions of cases . . . have held preempted
claims for misappropriation") (citations omitted). Of course,
a misappropriation claim will survive preemption if it alleges
an extra element, such as a confidential or fiduciary
relationship. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982
F.2d 693, 717 (2d Cir. 1992). However, Stromback's
assertion that his claim is based upon the time, effort, and
money that he expended in developing the screenplay is not
an extra element that saves his claim from preemption. See
Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973,
976-77 (9th Cir. 1987) (finding the plaintiff's
misappropriation claim preempted because the "[e]ffort
expended to create a Tentative Map and supporting
documents is effort expended to create tangible works of
authorship" and "[a]s such, this effort is within the scope of
copyright protection"); Mayer v. Josiah Wedgwood & Sons,
Ltd., 601 F. Supp. 1523, 1535 (S.D.N.Y. 1985) (rejecting as
preempted the plaintiff's unfair competition/misappropriation
claim alleging misappropriation of the plaintiff's time, effort,
and talent). Therefore, this claim is preempted.
b. Misappropriation of Trade Secrets
Count VI of Stromback's first amended complaint alleged
a claim for misappropriation of trade secrets under the
Michigan Uniform Trade Secrets Act ("MUTSA"), M.C.L.
§§ 445.1901-.1910, and under Michigan and California

-- 13 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
27
7The district court did not decide whether Michigan or California law
applies to this claim , and it appears that the parties did not raise the issue
in their briefing. We find it unnecessary to address the choice of law issue
at this point.
common law.7 Under Michigan law, the elements of a
common law claim for misappropriation of trade secrets are:
(1) the existence of a trade secret; (2) the defendant's
acquisition of the trade secret in confidence; and (3) the
defendant's unauthorized use of it. Aerospace Am., Inc. v.
Abatement Techs., Inc., 738 F. Supp. 1061, 1069 (E.D. Mich.
1990) (citing Kearns v. Ford Motor Co., 203 U.S.P.Q. 884,
888 (E.D. Mich. 1978)). MUTSA displaces common law
trade secret misappropriation claims arising after October 1,
1998 – the effective date of MUTSA. M.C.L. § 445.1910.
Stromback alleged in his complaint that "Defendants had a
duty not to disclose or exploit confidential information
acquired from [Stromback]"; that "Defendants were aware
that the information obtained by [sic] Stromback was
confidential information and/or trade secrets"; that
"Defendants disclosed and exploited the confidential
information they received from [Stromback], without
Stromback's permission"; and that Stromback has been
damaged as a result of "[Defendants'] breaches of their duty
of confidentiality." (1st Am. Compl. ¶¶ 64-67, J.A. at 246.)
In concluding that the misappropriation of trade secrets
claim was preempted, the district court lumped it together
with Stromback's commercial misappropriation claim, stating
that it was "substantively no different than [the] commercial
misappropriation claim." In doing so, however, the district
court failed to recognize that a considerable number of cases
have held that misappropriation of trade secrets claims are not
preempted because they require proof of a confidential
relationship, which provides the extra element required to
survive preemption. For example, in Computer Associates
28 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992),
the Second Circuit stated:
[M]any state law rights that can arise in connection with
instances of copyright infringement satisfy the extra
element test, and thus are not preempted by section 301.
These include unfair competition claims based upon
breaches of confidential relationships, breaches of
fiduciary duties and trade secrets.
. . . .
Trade secret claims often are grounded upon a
defendant's breach of a duty of trust or confidence to the
plaintiff through improper disclosure of confidential
material. The defendant's breach of duty is the gravamen
of such trade secret claims, and supplies the "extra
element" that qualitatively distinguishes such trade secret
causes of action from claims for copyright infringement
that are based solely upon copying.
Id. at 717 (citations omitted). See also Dun & Bradstreet
Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197,
218 (3d Cir. 2002) ("We agree with Geac that if their
misappropriation of trade secrets claim was based on such
breach of duty of trust and confidentiality, it would survive
preemption in this case."); Ez-Tixz, Inc. v. Hit-Tix, Inc., 919
F. Supp. 728, 737-38 (S.D.N.Y. 1996) (holding that because
"plaintiff's claim for trade secret misappropriation require[d]
proof of a breach of confidence, it [was] not preempted by
federal law"); 1 Nimmer § 1.01[B][1][h] ("Actions for
disclosure and exploitation of trade secrets require a status of
secrecy, not required for copyright, and hence, are not
preempted.") (footnotes omitted). Several courts have held
that claims brought under state trade secret statutes modeled
on the Uniform Trade Secrets Act, such as MUTSA, survive
preemption because the required proof of the existence and
breach of a confidential relationship provides the extra

-- 14 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
29
element necessary to survive preemption. See Data Gen.
Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1165
(1st Cir. 1994) (holding that a claim under Massachusetts
trade secret law was not preempted "because participation in
the breach of a duty of confidentiality – an element that forms
no part of a copyright infringement claim – represents unfair
competitive conduct qualitatively different from mere
unauthorized copying"); Trandes Corp. v. Guy F. Atkinson
Co., 996 F.2d 655, 660 (4th Cir. 1993) (holding that a claim
under the Maryland Uniform Trade Secrets Act was not
preempted because it "require[d] proof of a breach of trust or
confidence"); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081,
1090 n.13 (9th Cir. 1989) (noting that a claim under the
California Uniform Trade Secrets Act would not involve a
legal or equitable right equivalent to an exclusive right of a
copyright owner under the Copyright Act); Gates Rubber Co.
v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847-48 (10th Cir.
1993) ("Because Gates' claim for trade secret
misappropriation under the Colorado Uniform Trade Secrets
Act requires proof of a breach of trust or confidence – proof
that is not required under the Copyright Act – Gates' state law
claims are not preempted by federal law."); Bateman v.
Mnemonics, Inc., 79 F.3d 1532, 1549 (11th Cir. 1996)
(expressing "no doubt that the Florida trade secret statute at
issue satisfies the 'extra element' test generally employed by
courts in performing copyright preemption analysis").
Because proof of a confidential relationship is a necessary
element in a trade secret misappropriation claim under both
the common law and uniform trade secrets laws such as
MUTSA, we hold that Stromback's trade secrets
misappropriation claim is not preempted by Section 301;
proof of a confidential relationship and its breach provide an
extra element.
In noting that Stromback did not argue that there was an
extra element, such as a fiduciary relationship, the district
court failed to undertake the proper inquiry in an equivalency
30 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
8NLC contends that because Stromback did not argue to the district
court that there was a fiduciary relationship with NLC, the argument
should be preclud ed on app eal. W hile we will generally decline to
consider on appeal issues not considered by the district court, we do
recognize an exception where the issue presents only a question of law.
United Food & C om mercial W orkers Un ion, Local 1099 v. Sou thwest
Oh io Reg 'l Transit Auth., 163 F.3d 34 1, 360 n.9 (6th Cir. 1998) (quoting
City Mg m't Corp. v. U.S. Chem. Co., 43 F.3d 244, 255 (6th Cir. 1994)).
Here we address the issue of a confidential relationship as part of our legal
analysis.
analysis.8 In Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d
655 (4th Cir. 1993), the Fourth Circuit stated that in
determining equivalency, a court should compare "the
elements of the causes of action . . ., not the facts pled to
prove them." Id. at 659. See also Gates Rubber Co., 9 F.3d
at 847 (examining elements of the state cause of action for
misappropriation of trade secrets to determine whether the
extra element requirement was met); Harolds Stores, Inc. v.
Dillard Dep't Stores, Inc., 82 F.3d 1533, 1543 (10th Cir.
1996) (following Trandes Corp.). We believe that Trandes
Corp. provides an accurate statement of the law generally,
where the state law claim itself furnishes the extra element
needed to avoid equivalency. In this case, for example, the
district court could have determined the preemption issue
solely by examining the elements for a trade secrets
misappropriation claim under Michigan law. Because a
plaintiff alleging such a claim must prove the existence and
breach of a confidential relationship, the claim itself is not
preempted. Whether the plaintiff has actually alleged the
proper elements of the claim goes to the question of whether
the claim could survive a Rule 12(b)(6) motion to dismiss, not
whether the claim is preempted. See Firoozye v. Earthlink
Network, 153 F. Supp. 2d 1115, 1131 (N.D. Cal. 2001) ("The
defendants' contention that the plaintiff has failed to allege a
confidential relationship and their citation to Design Art
address the merits of the plaintiff's trade secret claim, not
whether that claim is preempted by the Copyright Act.").

-- 15 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
31
Nonetheless, a court may be required to review the facts as
pled by the plaintiff in order to determine whether the acts
giving rise to the state law claim are merely acts of copyright
infringement. See Sturdza, 281 F.3d at 1304 ("To determine
whether a state law claim is qualitatively different from a
copyright claim – that is, whether the state claim has an 'extra
element' – courts generally examine both the elements of the
state law cause of action and the way the plaintiff has actually
pled that cause of action."). For example, a conversion claim
will usually survive preemption because the tort relates to the
unauthorized exercise of dominion and control, or
interference with, another's personal property. See, e.g.,
Carson v. Dynegy, Inc., 344 F.3d 446, 456-57 (5th Cir. 2003)
(holding that conversion claim under Texas law survived
preemption); United States ex rel. Berge v. Bd. of Trustees of
the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997) ("It is
hornbook law that a state law action for conversion will not
be preempted if the plaintiff can prove the extra element that
the defendant unlawfully retained the physical object
embodying its work.") (internal quotations and citations
omitted). Where the conversion claim involves intangible
property, a court should examine the plaintiff's allegations to
determine whether the state law right is equivalent to one of
the exclusive rights under Section 106. See Daboub, 42 F.3d
at 289-90 (holding that the conversion claim was preempted
where the plaintiffs alleged that the defendants improperly
copied, distributed, and performed their song); Berge, 104
F.3d at 1463 (holding conversion claim preempted because
"what is crucial is that Berge makes no claim that appellants
converted any tangible objects embodying her intellectual
property"). Likewise, a promise in a breach of contract claim
may suffice as an extra element, but this determination must
be based upon a review of the plaintiff's allegations. Higher
Gear Group, Inc. v. Rockenbach Chevrolet Sales, Inc., 223 F.
Supp. 2d 953, 958 (N.D. Ill. 2002). We followed this
approach in Wrench. Although we examined Michigan law
regarding contracts implied in fact and contracts implied in
law, it was necessary to also examine the plaintiffs' breach of
32 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
contract allegations to determine whether the promise was a
"promise to pay for the use of the work," which would not
have been preempted, or merely "a promise to refrain from
reproducing, performing, distributing or displaying the work,"
which would have been preempted. Wrench, 256 F.3d at 457.
Similarly, in Murray Hill Publications, Inc. v. ABC
Communications, Inc., 264 F.3d 622 (6th Cir. 2001), we set
forth the law in Michigan regarding conversion and then
determined from the plaintiffs' allegations that the claim was
preempted because it met the equivalency requirement. Id. at
636-37.
Although the district court incorrectly determined that the
misappropriation of trade secrets claim was preempted, this
panel may affirm if the decision was correct for any reason,
including one the district court did not consider. United
States Postal Serv. v. Nat'l Ass'n of Letter Carriers, 330 F.3d
747, 750 (6th Cir. 2003). We conclude that dismissal was
proper because, as a matter of law, "The Keeper" poem and
screenplay were not trade secrets and, even if they were, there
was no misappropriation. In order to constitute a trade secret
under MUTSA, information alleged to be a trade secret must
"[d]erive independent economic value, actual or potential,
from not being generally known to, and not being readily
ascertainable by proper means by, other persons who can
obtain economic value from its disclosure or use." M.C.L.
§ 445.1902(d)(i). Thus, the essence of a trade secret is that it
derives its value from secrecy. Here, Stromback could not
possibly argue that his poem and screenplay had "independent
economic value" because he kept them secret. Those works
would have "independent economic value" only if they were
exploited publicly through broad dissemination. Furthermore,
even if Stromback's poem and screenplay had some
independent economic value from being held in secrecy,
Stromback could not prove misappropriation. As set forth
above, "The Keeper" poem and screenplay and "Little Nicky"
are not at all similar. The only similarities arise from
common and well-known themes, plots, and character traits

-- 16 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
33
that "are readily ascertainable by other means," id., and
therefore cannot constitute trade secrets. Because we have
concluded that the two works are not substantially similar, no
reasonable juror could conclude that NLC misappropriated
any trade secrets from Stromback's works.
c. Interference with Prospective Economic Advantage
Stromback's final state law claim is a claim for interference
with prospective economic advantage. The elements of the
claim are: (1) the existence of a valid business relationship or
expectancy; (2) knowledge of the relationship or expectancy
by the defendant; (3) intentional interference by the defendant
which induces or causes a breach or termination of the
relationship or expectancy; and (4) damage to the plaintiff.
BPS Clinical Labs. v. Blue Cross & Blue Shield of Mich., 217
Mich. App. 687, 698, 552 N.W.2d 919, 925 (1996) (per
curiam). Stromback's allegations in support of this claim are
that he "had a legitimate expectation of a future economic
benefit from the development of his poetry and screenplay";
that NLC "knew that the use of [Stromback's] poem and
screenplay would interfere with [his] reputation and [its]
development . . . within the film industry"; and that NLC's
"actions in misappropriating the poem and screenplay
including the characters, character interplay, scenes and
events . . . and passing them off as [its] own in the production
of 'Little Nicky' . . . were made with the intent that
[Stromback's] expected relationships would be disrupted."
(1st Am. Compl. ¶¶ 77-79, J.A. at 248.)
Generally, tortious interference claims (with contract or
prospective economic advantage) are held to be preempted
because the rights asserted in such claims are not qualitatively
different from the rights protected by copyright. See, e.g.,
Idema v. Dreamworks, Inc., 162 F. Supp. 2d 1129, 1193
(C.D. Cal. 2001) (holding that the plaintiff's claim for
negligent interference with prospective economic advantage
did "not protect any right 'qualitatively different' from those
34 Stromback v. New
Line Cinema, et al.
Nos. 02-2387/2388
rights protected by copyright"); Titan Sports, Inc. v. Turner
Broadcasting Sys., Inc., 981 F. Supp. 65, 74 (D. Conn. 1997)
("The right that Plaintiff's contracts with Hall and Nash seeks
to protect is Plaintiff's exclusive ownership right in its
copyrighted material – precisely what the Copyright Act
seeks to protect."); Aqua Bay Concepts, Inc. v. Grosse Point
Bd. of Realtors, No. 91-CV-74819, 1992 WL 350275, at *4
(E.D. Mich. May 7, 1992) ("There is no indication that the
state allegation of contractual interference is 'qualitatively
different' from the copyright infringement claim.").
According to Professor Nimmer,
Insofar as unauthorized reproduction, distribution,
performance or display causes the plaintiff to lose the
benefits that would flow from an actual or prospective
contract whereby plaintiff would authorize any such acts,
the rights created by the tort of contract interference do
not appear to differ qualitatively from rights under
copyright; copyright also contemplates loss of actual or
prospective contract benefits by reason of such
unauthorized acts. Pre-emption in this context would,
then, appear to be justified. The fact that the tort, unlike
copyright infringement, requires awareness of the
conflicting contract and an intentional interference with
it merely means that the state-created right is narrower
than its copyright counterpart, not that it is qualitatively
different so as to preclude pre-emption.
1 Nimmer § 1.01[B][1][a] (footnotes omitted). See also
Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d
195, 201 (2d Cir. 1983), rev'd on other grounds, 471 U.S.
539, 105 S. Ct. 2218 (1985) (finding the tortious interference
claim preempted because unauthorized publication was the
basis for the violation and the elements of awareness and
intentional interference pled in the tortious interference claim
did not render the claim different from a copyright claim).

-- 17 of 18 --

Nos. 02-2387/2388 Stromback v. New
Line Cinema, et al.
35
Here, Stromback's tortious interference claim arises out of
NLC's alleged copying, display, and distribution of "The
Keeper" poem and screenplay – acts which also violate the
exclusive rights granted by Section 106. This claim is based
upon activity which constitutes copyright infringement and is
preempted because it is not "qualitatively different" from a
copyright infringement claim. We reject Stromback's
argument that the development of his reputation is an extra
element that somehow renders the claim different from a
copyright infringement claim. The bottom line is that the
foundation of Stromback's claim is NLC's violation of rights
that are granted under and protected by the Copyright Act.
III.
For the foregoing reasons, the judgment of the district court
is AFFIRMED.

-- 18 of 18 --