Murray Hill Publications, Inc. v. Twentieth Century Fox Film Corporation

*The Honorable Walter Herbert Rice, United States District Judge for
the Southern District of Ohio, sitting by designation.
1
RECOMMENDED FOR FULL-TEXT PUBLICATION
Pursuant to Sixth Circuit Rule 206
ELECTRONIC CITATION: 2004 FED App. 0082P (6th Cir.)
File Name: 04a0082p.06
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
_________________
MURRAY HILL PUBLICATIONS,
INC.,
Plaintiff-Appellee/
Cross-Appellant,
v.
TWENTIETH CENTURY FOX
FILM CORPORATION,
Defendant-Appellant/
Cross-Appellee.
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Nos. 01-2668/2721
Appeal from the United States District Court
for the Eastern District of Michigan at Ann Arbor.
No. 97-60405—Marianne O. Battani, District Judge.
Argued: August 7, 2003
Decided and Filed: March 19, 2004
Before: BOGGS, Chief Judge; SILER, Circuit Judge; and
RICE, District Judge.*
2 Murray Hill Pub., Inc. v.
Twentieth Century Fox Film
Corp.
Nos. 01-2668/2721
_________________
COUNSEL
ARGUED: Louis P. Petrich, LEOPOLD, PETRICH &
SMITH, Los Angeles, California, for Appellant. Mayer
Morganroth, MORGANROTH & MORGANROTH,
Southfield Michigan, for Appellee. ON BRIEF: Louis P.
Petrich, LEOPOLD, PETRICH & SMITH, Los Angeles,
California, Maria N. Bernier, Gregory B. Jordan, REED &
SMITH, Pittsburgh, Pennsylvania, Laurie J. Michelson,
BUTZEL LONG, Detroit, Michigan, J. Michael Huget,
BUTZEL LONG, Ann Arbor, Michigan, for Appellant.
Mayer Morganroth, Jeffrey B. Morganroth, Jason R. Hirsch,
MORGANROTH & MORGANROTH, Southfield, Michigan,
for Appellee.
_________________
OPINION
_________________
BOGGS, Chief Judge. Twentieth Century Fox Film
Corporation (“Fox”) appeals following a jury verdict in favor
of plaintiff, Murray Hill Publications, Inc. (“Murray Hill”), in
its action for copyright infringement. During the creation of
the movie “Jingle All The Way” (“JATW”), Fox received
from Murray Hill a submission of the screenplay for “Could
This Be Christmas” (“CTBC”). After the theatrical release of
JATW, Murray Hill sued Fox, alleging that the JATW movie
infringed upon its copyright of the CTBC screenplay. At
trial, both Fox and Murray Hill presented expert evidence to
establish whether the JATW movie was substantially similar
to the CTBC screenplay. After the jury returned a verdict for
Murray Hill, the district court disallowed damage items
representing the bulk of the jury award and denied attorney’s
fees to Murray Hill. On appeal, Fox argues that it was

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

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

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

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

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2Of the two principles, that ideas are not p rotectible and that
expressions are protectible, it is the former that is the stronger. Where an
idea by necessity, or near-necessity, or custom, leads to a particular
expression, it is the expression which b ecomes unpro tected, rather than
the idea that become s protected. To reach the opposite conclusion would,
through the backdoor, create a forbidden cop yright in ideas. Shaw, 919
F.2d at 1360.
This brings us to the most complex part of the substantial
similarity inquiry: the determination of which parts of the
original work are protectible and which are not. It is
“impossible to articulate a definitive demarcation that
measures when the similarity between works involves
copying of protected expression; decisions must inevitably be
ad hoc.” Shaw, 919 F.2d at 1356 (citing Krofft, 562 F.2d at
1164). Nevertheless, certain categorical judgments and
guideposts have been established. Unoriginal work enjoys no
copyright protection. “The sine qua non of copyright is
originality. To qualify for copyright protection, a work must
be original to the author.” Feist, 499 U.S. at 345. “[I]t is a
constitutional requirement that a plaintiff bringing an
infringement claim must prove ‘copying of constituent
elements of the work that are original.’” Kohus, 328 F.3d at
853 (emphasis added in Kohus) (quoting Feist, 499 U.S. at
361). However, “the requisite level of creativity is extremely
low; even a slight amount will suffice. The vast majority of
works make the grade quite easily, as they possess some
creative spark, ‘no matter how crude, humble or obvious’ it
might be.” Feist, 499 U.S. at 345 (quoting 1 Nimmer,
§ 1.08[C][1]).
In the general run of cases, where minimal creativity can be
shown, the vital distinction is between ideas and their
expressions. Copyright does not protect ideas, but only the
expression of ideas. Kohus, 328 F.3d at 855.2 “The real task
in a copyright infringement action, then, is to determine
12 Murray Hill Pub., Inc. v.
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whether there has been copying of the expression of an idea
rather than just the idea itself.” Krofft, 562 F.2d at 1163.
“[N]o one infringes, unless he descends so far into what is
concrete [in a work] as to invade . . . [its] expression.” Nat’l
Comics Publ’ns v. Fawcett Publ’ns, 191 F.2d 594, 600 (2d
Cir. 1951). To draw the distinction between ideas and their
expressions, courts use the abstraction test first described by
Judge Learned Hand with respect to a theatrical play. Kohus,
328 F.3d at 855.
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.
Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d
Cir. 1930). This test will only place a work’s elements on a
spectrum from more expression-like to more idea-like. It
does not pick the point on the spectrum at which elements
cease to be unprotected ideas and become protectible
expressions. Nevertheless, it serves as a useful, if not
dispositive, analytical tool in drawing these distinctions. See
Peter Pan Fabrics v. Martin Weiner Corp., 274 F.2d 487, 489
(2d Cir. 1960) (noting that “no principle can be stated as to
when an imitator has gone beyond copying the ‘idea,’ and has
borrowed its ‘expression’” and that such decisions hence must
“inevitably be ad hoc”).
Within the realm of works of fiction, literary or
cinematographic, expressions not protectible because they
follow directly from unprotectible ideas are known as scènes

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

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

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

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

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21
still available. At the warehouse, filled with Santa Clauses
and elves, Howard pays $300 for a Turbo Man figure, only to
have it revealed as a poorly made foreign knock-off, which
promptly falls apart in his hands. Before Howard can
complain, the police raid the warehouse and arrest the Santas
and elves. Howard barely escapes by using a toy police
identification badge. Howard’s SUV, parked outside the
warehouse, has been stripped clean by thieves.
Howard and Myron run into each other again in a coffee
shop and commiserate. Myron explains to Howard how all
his life’s misfortunes are traceable to not receiving a
particular popular toy when he was a child. A radio playing
in the coffee shop announces a call-in contest offering a
Turbo Man figure to the first person to name all of Santa’s
reindeer. Myron and Howard fight over the local payphone
but only manage to break it. Instead, they start running to the
nearby radio station. Howard, being in much better physical
condition than the portly Myron, arrives first at the station
and breaks into the broadcast booth of the program’s host.
Shortly afterwards, Myron too breaks into the booth and
threatens to blow it up using a mail bomb he carries unless he
is given the Turbo Man figure. When the host reveals that he
was only offering a gift certificate, Howard leaves, but Myron
drops the “bomb” which turns out to be only a regular
Christmas package. On the way out of the station, Myron is
apprehended by a police SWAT team, led by Hummel, but
manages to escape by using another mail bomb. This bomb
does explode, leaving Hummel comically singed.
Howard returns home defeated, but sees Ted and Liz
decorating his Christmas tree. Jealous and enraged, Howard
breaks into Ted’s house to steal the Turbo Man figure that
Ted had bragged about buying for his son. Inside Ted’s
house, Howard is attacked by Ted’s pet reindeer, accidentally
sets fire to several rooms, and is ultimately discovered by Ted
and Liz while holding the stolen Turbo Man figure. Liz,
22 Murray Hill Pub., Inc. v.
Twentieth Century Fox Film
Corp.
Nos. 01-2668/2721
disgusted with Howard’s behavior, leaves for the parade with
Jamie, Ted, and Ted’s son. After dropping off the children,
Ted attempts to kiss Liz, who violently rebuffs his advances.
Meanwhile, Howard shares some beers with the reindeer and
also heads for the parade. There Howard, mistaken for the
actor hired to play Turbo Man, is put into a high-tech Turbo
Man costume, put on a float, and given a special Turbo Man
action figure to present to the attending child of his choice.
At the parade, Howard/Turbo Man spots Jamie, who does
not recognize him, in the crowd and gives him the Turbo Man
figure. At this point, Myron, who has stolen the costume of
Dementor, Turbo Man’s nemesis, attacks Howard and Jamie
with intent to steal the figure. In a special-effects-heavy fight
between Howard/Turbo Man and Myron/Dementor, echoing
an episode of the Turbo Man television program glimpsed at
the beginning of the movie, Howard defeats Myron. After the
fight, Howard reveals himself to Jamie. Jamie realizes that
because he has the real Turbo Man for a father he does not
need the action figure and gives the figure to Myron.
Howard, Liz, and Jamie embrace and credits roll. In a post-
credit scene, Liz wonders what Howard bought her for
Christmas and the horrified Howard realizes that he forgot to
buy her a present.
V
Most of the issues that form the basis of a copyright
infringement claim are no longer in dispute in this case. The
CTBC screenplay was copyrighted. Fox did have access to
the CTBC screenplay before it registered the JATW
screenplay and before production of the JATW movie, but not
before it received the JATW “treatment.” Finally, the jury
found that the JATW movie and the CTBC screenplay were
substantially similar, establishing Murray Hill’s copyright
infringement claim. Fox appeals on the basis of the denial of
its pre- and post-verdict motions for judgment as a matter of

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

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“[w]here, as here, the accused works include both licensed
and unlicensed features, infringement will depend on whether
the unlicensed features are entitled to protection.” Id. at 1441.
“Because only those elements of a work that are protectible
and used without the author’s permission can be compared
when it comes to the ultimate question of illicit copying, we
use analytic dissection to determine the scope of copyright
protection before works are considered ‘as a whole.’” Id. at
1443 (citations omitted). In so concluding, the Apple court
extended the application of filtering, from unprotectible
elements to protectible elements used with the permission of
the copyright owner.
In Sturdza, an architect brought a claim against the United
Arab Emirates alleging that the design of the defendant’s new
embassy infringed on the copyright of architectural drawings
she had previously submitted to the defendant. 281 F.3d at
1291-92. The defendant contended that the design was in fact
based on the work submitted by another architect. Ibid. The
district court in performing the substantial-similarity analysis
discounted elements of the embassy design that were already
present in work submitted by the other architect before the
defendant had access to the plaintiff’s drawings. Id. at 1297.
Because the plaintiff did not appeal this discounting, the
District of Columbia Circuit also excluded the elements that
were already present in the earlier work. Ibid.
Logic also supports the filtering of independently-created
elements. The purpose of the substantial-similarity analysis
is to answer the question whether the defendant copied the
work of the plaintiff. Ordinarily, similar elements between
known work of the plaintiff and the defendant’s work will,
depending on the degree of uniqueness and originality of the
element, support such an inference. However, where
defendant owns a prior work containing the same elements,
he has no reason, beyond the illicit thrill of copyright
infringement, to copy wrongfully from another what he could
26 Murray Hill Pub., Inc. v.
Twentieth Century Fox Film
Corp.
Nos. 01-2668/2721
legally copy from himself. Therefore, where an element
occurs both in the defendant’s prior work and the plaintiff’s
prior work, no inference of copying can be drawn. See
Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d
Cir. 1936) (“If the defendant has had access to other material
which would have served him as well, his disclaimer [of
copying] becomes more plausible.”); Ellis, 177 F.3d at 507
(“[A]n inference of copying is rebuttable by evidence of
independent creation of the allegedly infringing work.”)
(citations omitted). Such elements should be removed from
consideration.
Therefore, we hold that elements of a copyright defendant’s
work that were created prior to access to a plaintiff’s work are
to be filtered out at the first stage of substantial-similarity
analysis, just as non-protectible elements are. In the present
case, no reasonable jury could have found substantial
similarity solely on the basis of the six minor elements not so
filtered. Therefore, Fox’s motion for judgment as a matter of
law should have been granted.
VI
For the foregoing reasons, we REVERSE the judgment of
the district court and REMAND for an entry of judgment as
a matter of law in favor of Fox.

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