Gene MILLER, Plaintiff-Appellee, v. UNIVERSAL CITY
STUDIOS, INC., et al., Defendants-Appellants.
No. 78-3772
UNITED STATES COURT OF APPEALS, FIFTH CIRCUIT
650 F.2d 1365; 1981 U.S. App. LEXIS 11135; 212 U.S.P.Q.
(BNA) 345; Copy. L. Rep. (CCH) P25,285; 7 Media
L. Rep. 1785
July 23, 1981
PRIOR HISTORY: [**1]
Appeal from the United States District Court for the Southern
District of Florida.
COUNSEL: Barry R. Davidson, Miami, Fla., Youngman, Hungate
& Leopold, Louis P. Petrich, Los Angeles, Cal., for defendants-appellants.
Fine, Jacobson, Block & Semet, Irwin J. Block, Joseph H.
Serota, Miami, Fla., Arthur R. Miller, Cambridge, Mass., for plaintiff-appellee.
JUDGES: Before RONEY, HILL and KRAVITCH, Circuit Judges.
A sensational kidnapping, committed over a decade ago, furnishes
the factual backdrop for this copyright infringement suit. The
issue is whether a made-for-television movie dramatizing the crime
infringes upon a copyrighted book depicting the unsuccessful ransom
attempt. After careful and lengthy study and consideration, we
conclude that the verdict for plaintiff must be reversed and the
cause remanded for a new trial because at the request of plaintiff
and over defendants' objection, the case was presented and argued
to the jury on a false premise: that the labor of research by
an author is protected by copyright.
The decision to reverse is made more difficult because the
record and the arguments to this Court reveal sufficient evidence
to [**2] support a finding of infringement and a verdict for plaintiff
under correct theories of copyright law. Plaintiff's presentation
and argument to the jury, however, make it improper to conclude
that the short erroneous instruction, imbedded in a field of proper
instructions, was harmless error.
Facts
The facts are fully developed in the district court's opinion,
Miller v. Universal City Studios, Inc., 460 F. Supp. 984 (S.D.Fla.1978).
A synopsis will suffice for purposes of this appeal.
In December 1968 the college-aged daughter of a wealthy Florida
land developer was abducted from an Atlanta motel room and buried
alive in a plywood and fiberglass capsule. A crude life-support
system kept her alive for the five days she was underground before
her rescue. Gene Miller, a reporter for the Miami Herald, covered
the story and subsequently collaborated with the victim to write
a book about the crime. Published in 1971 under the title 83 Hours
Till Dawn, the book was copyrighted along with a condensed version
in Reader's Digest and a serialization in the Ladies Home Journal.
The co-author has assigned her interest in this litigation to
Miller.
In January 1972 a Universal City Studios (Universal) [**3]
producer read the condensed version of the book and thought the
story would make a good television movie. He gave a copy of the
book to a scriptwriter, who immediately began work on a screenplay.
Although negotiations for purchase of the movie rights to 83 Hours
Till Dawn were undertaken by Universal, no agreement with Miller
was ever reached. The scriptwriter was eventually advised that
use of the book in completing the script was "verboten."
The movie was completed, however, and aired as an ABC Movie of
the Week, The Longest Night.
The evidence at trial was conflicting on whether the scriptwriter
relied almost entirely on the book in writing the screenplay or
whether he arrived at his version of the kidnapping story independently.
Both plaintiff and his expert witness testified to numerous similarities
between the works. The jury, which had copies of the book and
viewed the movie twice during the trial, found the movie infringed
Miller's copyright and awarded him over $ 200,000 in damages and
profits.
The most substantial question presented on appeal is whether
the district court erred [*1368] in instructing the jury that
"research is copyrightable." Because the Court finds
[**4] reversible error in this regard, other issues raised on
this appeal will be discussed only as necessary to avoid further
confusion on retrial.
Is Research Copyrightable?
The district court instructed the jury that if an author engages
in research on factual matters, "his research is copyrightable."
This instruction, at best confusing, at worst wrong, was given
with some reluctance by the trial court over the strenuous objection
of defendants on the urging by plaintiff, "That's the heart
of the case."
As it develops on appeal, plaintiff may have won without the
instruction, but later explanation by the trial court and the
brief on appeal convinces this Court that the idea conveyed to
the jury by the court and trial counsel contained an erroneous
view of the law. In context, the instruction is found in this
portion of the extended jury charge:
Copyrightability is best defined in terms of what can and cannot
be copyrighted. Ideas can never be copyrighted. Only the particular
expression of an idea can be copyrighted. A general theme cannot
be copyrighted but its expression throughout the pattern of the
work, the sequence of its events, the development of the interplay
of its characters, [**5] and its choice of detail and dialogue
can be copyrighted. If, however, the expression of the idea necessarily
follows from the idea to such an extent that the idea is capable
of expression only in a more or less stereotyped form, it is not
copyrightable.
Similarly, in a case like the instant one, which deals with
factual matters such as news events, the facts themselves are
not copyrightable but the form of expression of the facts and
their arrangement and selection are copyrightable. Moreover, if
an author, in writing a book concerning factual matters, engages
in research on those matters, his research is copyrightable. As
was the case with ideas, if the expression arrangement and selection
of the facts must necessarily, by the nature of the facts, be
formulated in given ways then they are not copyrightable. (Challenged
instruction underlined).
It is well settled that copyright protection extends only to
an author's expression of facts and not to the facts themselves.
n1 See, e. g., Rosemont Enterprises,
Inc. v. Random House, Inc., 366 F.2d 303, 309 (2d Cir. 1966),
cert. denied, 385 U.S. 1009, 87 S. Ct. 714, 17 L. Ed. 2d 546 (1967);
Chicago Record-Herald Co. v. Tribune [**6] Association, 275 F.
797, 798-99 (7th Cir. 1921); Alexander v. Haley, 460 F. Supp.
40, 45 (S.D.N.Y.1978); Lake v. Columbia Broadcasting System, 140
F. Supp. 707, 708-09 (S.D.Cal.1956). This dichotomy between facts
and their expression derives from the concept of originality which
is the premise of copyright law. Under the Constitution, copyright
protection may secure for a limited time to "Authors ...
the exclusive Right to their respective Writings." U.S.Const.
Art. I, @ 8, cl. 8. An "author" is one "to whom
anything owes its origin; originator; maker; one who completes
a work of science or literature." Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53, 58, 4 S. Ct. 279, 281, 28 L. Ed. 349
(1884). Obviously, a fact does not originate with the author of
a book describing the fact. Neither does it originate with one
who "discovers" the fact. "The discoverer merely
finds and records. He may not claim that the facts are "original'
with him although there may be originality and hence authorship
in the manner of reporting, i. e., the "expression,' of the
[*1369] facts." 1 M. Nimmer, Nimmer on Copyright @ 2.03(E),
at 2-34 (1980). Thus, since facts do not owe their origin to any
[**7] individual, they may not be copyrighted and are part of
the public domain available to every person.
The district court's charge to the jury correctly stated that
facts cannot be copyrighted. Nevertheless, in its order denying
defendants' motion for a new trial the court said it viewed "the
labor and expense of the research involved in the obtaining of
those uncopyrightable facts to be intellectually distinct from
those facts and more similar to the expression of the facts than
to the facts themselves." Miller v. [**8] Universal City
Studios, Inc., 460 F. Supp. at 987. The court interpreted the
copyright law to reward not only the effort and ingenuity involved
in giving expression to facts, but also the efforts involved in
discovering and exposing facts. In its view, an author could not
be expected to expend his time and money in gathering facts if
he knew those facts, and the profits to be derived therefrom,
could be pirated by one who could then avoid the expense of obtaining
the facts himself. Applying this reasoning to the case at bar,
the court concluded "(i)n the age of television "docudrama'
to hold other than research is copyrightable is to violate the
spirit of the copyright law and to provide to those persons and
corporations lacking in requisite diligence and ingenuity a license
to steal." Id. at 988.
Thus the trial court's explanation of its understanding of
its charge undercuts the argument to this Court that the word
"research" was intended to mean the original expression
by the author of the results of the research, rather than the
labor of research.
The issue is not whether granting copyright protection to an
author's research would be desirable or beneficial, but whether
such protection [**9] is intended under the copyright law. n2 In support of its instruction,
the district court cited a number of cases, one of which involved
the use of another's historical research in writing a literary
work. n3
[**10]
It is difficult to adequately distinguish some of the directory
cases, and particularly the language of the opinions. See Schroeder
v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977); Adventures
in Good Eating, Inc. v. Best Places to Eat, Inc., 131 F.2d 809
(7th Cir. 1942); Leon v. Pacific Telephone & Telegraph Co.,
91 F.2d 484 (9th Cir. 1937); Jeweler's Circular Publishing Co.
v. Keystone Publishing Co., 281 F. 83 (2d Cir.), cert. denied,
259 U.S. 581, 42 S. Ct. 464, 66 L. Ed. 1074 (1922); Southwestern
Bell Telephone Co. v. Nationwide Independent Directory Service,
Inc., 371 F. Supp. 900 (W.D.Ark.1974). A copyright in a directory,
however, is properly viewed as resting on the originality of the
selection and arrangement of the factual material, rather than
on the industriousness of the efforts to develop the information.
See Nimmer, supra, at @ 3.04. Copyright protection does not extend
to the facts themselves, and the mere use of the information contained
in a [*1370] directory without a substantial copying of the format
does not constitute infringement. See, e. g., New York Times Co.
v. Roxbury Interface, Inc., 434 F. Supp. 217 (D.N.J.1977) (reference
to a copyrighted index [**11] to produce a substantially different
type of index is fair use); Triangle Publications, Inc. v. Sports
Eye, Inc., 415 F. Supp. 682 (E.D.Pa.1976) (holding that data compiled
and published by plaintiff in the "Past Performances"
section of the Daily Racing Form could be used by defendant to
make the comparisons and judgments found in its competing publication
Fast Performances without infringing plaintiff's copyright because
only the method or form of expressing the data, and not the data
itself, is copyrightable).
In any event, it may be better to recognize the directory cases
as being in a category by themselves rather than to attempt to
bring their result and rationale to bear on nondirectory cases.
Under the 1909 Copyright Act, directories are specifically identified
as copyrightable subject matter, 17 U.S.C. @ 5(a) (1970), n4 and the rule is now well settled
that they can be copyrighted, see Nimmer, supra, at @ 2.04(B).
However appropriate it may be to extend copyright protection to
the selection and arrangement of factual material in a directory
if it involves originality and hence authorship, and however difficult
it may be to reconcile these cases with the principle that facts
[**12] are not copyrightable, see Nimmer, supra, at @ 3.04, the
special protection granted directories under the copyright law
has generally not been applied to other factual endeavors. For
example, the labor involved in news gathering and distribution
is not protected by copyright although it may be protected under
a misappropriation theory of unfair competition. International
News Service v. The Associated Press, 248 U.S. 215, 39 S. Ct.
68, 63 L. Ed. 211 (1918). In the International News case, the
Supreme Court commented in dicta that while a newspaper story,
as a literary production, can by copyrighted, the news element
[**13] the information respecting current events contained in
the literary production is not the creation of the writer, but
is a report of matters that ordinarily are publici juris ; it
is the history of the day. It is not to be supposed that the framers
of the Constitution ... intended to confer upon one who might
happen to be the first to report a historic event the exclusive
right for any period to spread the knowledge of it.
Id. at 234, 39 S. Ct. at 71.
Apart from the directory cases, the only decision cited to
this Court which lends support for the challenged instruction
is Toksvig v. Bruce Publishing Co., 181 F.2d 664 (7th Cir. 1950).
In Toksvig, plaintiff had written a biography of Hans Christian
Anderson after extensive research of primary Danish sources.
Defendant, who could not read Danish, copied twenty-four specific
passages from plaintiff's book in writing her own biography. The
Seventh Circuit held the copying of these passages, original translations
from Danish separately copyrightable under 17 U.S.C. @ 6 (1970),
constituted copyright infringement. The court went on to reject
defendant's fair use defense, primarily because defendant's use
of the translations from [**14] Danish had allowed her to write
her biography in one-third the time it took plaintiff. The court
said the question was not whether defendant could have obtained
the same information by going to the sources plaintiff had used,
but whether she in fact had done her own independent research.
Id. at 667.
Although most circuits apparently have not addressed the question,
the idea that historical research is copyrightable was expressly
[*1371] rejected by the Second Circuit in the more soundly reasoned
case of Rosemont Enterprises, Inc. v. Random House, Inc., 366
F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S. Ct.
714, 17 L. Ed. 2d 546 (1967). In Rosemont, it was alleged that
defendant's biography of Howard Hughes infringed the copyright
on a series of Look articles about Hughes. The district court
had asserted in sweeping language that an author is not entitled
to utilize the fruits of another's labor in lieu of independent
research, relying on Toksvig. The Second Circuit reversed. While
not challenging the holding of Toksvig that substantial copying
of specific passages amounted to copyright infringement, it rejected
the language regarding independent research:
We [**15] ... cannot subscribe to the view that an author is
absolutely precluded from saving time and effort by referring
to and relying upon prior published material.... It is just such
wasted effort that the proscription against the copyright of ideas
and facts, and to a lesser extent the privilege of fair use, are
designed to prevent.
366 F.2d at 310 (citations omitted).
The Second Circuit has adhered to its position in the most
recent appellate case to address the question, Hoehling v. Universal
City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449
U.S. 841, 101 S. Ct. 121, 66 L. Ed. 2d 49 (1980). Hoehling involved
various literary accounts of the last voyage and mysterious destruction
of the German dirigible Hindenberg. Plaintiff A. A. Hoehling published
a book in 1962 entitled, Who Destroyed the Hindenberg? Written
as a factual account in an objective, reportorial style, the premise
of his extensively researched book was that the Hindenberg had
been deliberately sabotaged by a member of its crew to embarrass
the Nazi regime. Ten years later, defendant Michael McDonald Mooney
published his book, The Hindenberg. While a more literary than
historical account, it also hypothesized [**16] sabotage. Universal
City Studios purchased the movie rights to Mooney's book and produced
a movie under the same title, although the movie differed somewhat
from the book. During the litigation, Mooney acknowledged he had
consulted Hoehling's book and relied on it for some details in
writing his own, but he maintained he first discovered the sabotage
theory in Dale Titler's Wings of Mystery, also released in 1962.
Hoehling sued Mooney and Universal for copyright infringement.
The district court granted defendants' motion for summary judgment
and the Second Circuit affirmed, holding that, assuming both copying
and substantial similarity, all the similarities pertained to
categories of noncopyrightable material. The court noted the sabotage
hypothesis espoused in Hoehling's book was based entirely on interpretation
of historical fact and was not copyrightable. 618 F.2d at 979.
The same reasoning applied to Hoehling's claim that a number of
specific facts, ascertained through his personal research, were
copied by defendants. Relying on the Rosemont case, the court
stated that factual information is in the public domain and "each
(defendant) had the right to "avail himself of the facts
[**17] contained' in Hoehling's book and to "use such information,
whether correct or incorrect, in his own literary work.' "
618 F.2d at 979 (quoting Greenbie v. Noble, 151 F. Supp. 45, 67
(S.D.N.Y.1957)). See also Suid v. Newsweek Magazine, 503 F. Supp.
146 (D.D.C.1980).
We find the approach taken by the Second Circuit in Hoehling
and Rosemont to be more consistent with the purpose and intended
scope of protection under the copyright law than that implied
by Toksvig. The line drawn between uncopyrightable facts and copyrightable
expression of facts serves an important purpose in copyright law.
It provides a means of balancing the public's interest in stimulating
creative activity, as embodied in the Copyright Clause, against
the public's need for unrestrained access to information. It allows
a subsequent [*1372] author to build upon and add to prior accomplishments
without unnecessary duplication of effort. As expressed by the
Second Circuit in Hoehling :
- The copyright provides a financial incentive to those who
would add to the corpus of existing knowledge by creating original
works. Nevertheless, the protection afforded the copyright holder
has never extended to history, be [**18] it documented fact or
explanatory hypothesis. The rationale for this doctrine is that
the cause of knowledge is best served when history is the common
property of all, and each generation remains free to draw upon
the discoveries and insights of the past. Accordingly, the scope
of copyright in historical accounts is narrow indeed, embracing
no more than the author's original expression of particular facts
and theories already in the public domain.
618 F.2d at 974.
The valuable distinction in copyright law between facts and
the expression of facts cannot be maintained if research is held
to be copyrightable. There is no rational basis for distinguishing
between facts and the research involved in obtaining facts. To
hold that research is copyrightable is no more or no less than
to hold that the facts discovered as a result of research are
entitled to copyright protection. Plaintiff argues that extending
copyright protection to research would not upset the balance because
it would not give the researcher/author a monopoly over the facts
but would only ensure that later writers obtain the facts independently
or follow the guidelines of fair use if the facts are no longer
discoverable. [**19] But this is precisely the scope of protection
given any copyrighted matter, and the law is clear that facts
are not entitled to such protection. We conclude that the district
court erred in instructing the jury that research is copyrightable.
Our inquiry does not end here, however. In reviewing a trial
court's instructions to the jury an appellate court must consider
the charge as a whole from the standpoint of the jury, in view
of the allegations made, the evidence presented and the arguments
of counsel. If the charge as a whole correctly instructs the jury,
no reversible error may be committed even though a portion of
the charge may be technically imperfect. Shelak v. White Motor
Co., 581 F.2d 1155, 1161 (5th Cir. 1978); Coughlin v. Capitol
Cement Co., 571 F.2d 290, 300 (5th Cir. 1978).
In this case the erroneous statement of law was one sentence
in a charge of twelve pages correctly stating the distinction
between facts and expression and that facts are not copyrightable.
The idea that research is copyrightable was nevertheless impressed
upon the jury throughout the liability phase of the trial. In
opening argument, counsel for plaintiff stressed the amount of
labor and research [**20] done by Miller in writing the book.
Over defendants' objection, Miller was permitted to testify extensively
regarding the amount of time spent researching the book. Although
relevant to damages, such testimony was clearly irrelevant to
the question of whether defendants' work had infringed plaintiff's
book. In closing argument, plaintiff's counsel again stressed
that everything Miller did in his research for eighteen to twenty
months and put in his book was copyrightable. The fact that counsel
considered the faulty instruction to be "the heart"
and "the guts of the case," as he told the trial court,
is further indication that the "research is copyrightable"
theory permeated the entire liability phase of the trial.
Viewing the record as a whole, the Court is left with a substantial
and ineradicable doubt as to whether the jury was properly guided
in its deliberations. See McCullough v. Beech Aircraft Corp.,
587 F.2d 754 (5th Cir. 1979). Because there is uncertainty as
to whether the jury was actually misled, the erroneous instruction
cannot be ruled harmless and a new trial is required.
Exclusion of Defendants' Expert Witness
Before trial the district court entered a general sequestration
[**21] order applicable [*1373] to all witnesses, pursuant to
Fed.R.Evid. 615. Although sequestered, defendants' literary expert
witness, Professor Sullivan, received transcribed portions (known
as daily copy) of Gene Miller's trial testimony. When discovered
on the ninth day of trial, the court found this to be a clear
and intentional violation of the sequestration order and refused
to allow Professor Sullivan to testify.
On appeal defendants challenge both the finding of a violation
of the rule and the exclusion of their expert witness as a sanction
for the violation. Since the sanction applied here would be reasonable
for a violation of rule 615, we address only whether the district
court correctly held that a violation occurred.
Rule 615 provides:
At the request of a party the court shall order witnesses excluded
so that they cannot hear the testimony of other witnesses, and
it may make the order of its own motion. This rule does not authorize
exclusion of (1) a party who is a natural person, or (2) an officer
or employee of a party which is a natural person designed as its
representative by its attorney, or (3) a person whose presence
is shown by a party to be essential to [**22] the presentation
of his cause.
Defendants, contending it was not a violation of the rule to
allow Professor Sullivan to read daily copy in preparation for
his court appearance, argue (1) the reading of daily copy is not
a violation because rule 615 literally prohibits witnesses only
from hearing the testimony of other witnesses; (2) expert witnesses
are impliedly exempt from sequestration under the rule; and (3)
Professor Sullivan was expressly exempt from sequestration under
subsection (3) of the rule because he was necessary for the management
of the case.
The purpose of the sequestration rule is to prevent the shaping
of testimony by one witness to match that of another, and to discourage
fabrication and collusion. Taylor v. United States, 388 F.2d 786
(9th Cir. 1967); United States v. Leggett, 326 F.2d 613 (4th Cir.),
cert. denied, 377 U.S. 955, 84 S. Ct. 1633, 12 L. Ed. 2d 499 (1964).
The opportunity to shape testimony is as great with a witness
who reads trial testimony as with one who hears the testimony
in open court. The harm may be even more pronounced with a witness
who reads trial transcript than with one who hears the testimony
in open court, because the former [**23] need not rely on his
memory of the testimony but can thoroughly review and study the
transcript in formulating his own testimony. The court properly
held that providing a witness daily copy constitutes a violation
of rule 615.
Defense counsel's statement during oral argument that it is
a common practice in the Miami area to allow witnesses to read
daily copy despite the existence of a sequestration order gives
us some cause for concern. There is nothing in the record to substantiate
counsel's statement, however, and we cannot speculate that most
attorneys in Miami either do not realize that reading daily copy
violates the sequestration rule or have adopted a practice that
violates the rule. The district judge commented at trial that
in the five years he had been on the bench he had never heard
of allowing witnesses to read daily copy.
Defendants argue that rule 615 must be read to impliedly exclude
from sequestration expert witnesses, who usually do not testify
regarding the facts of the case but only express their opinion
based on those facts, in order to prevent the rule from conflicting
with rule 703, n5 which permits
an expert to base his opinion on facts or data [*1374] [**24]
perceived by him at trial. Defendants rely primarily on Morvant
v. Construction Aggregates Corp., 570 F.2d 626 (6th Cir. 1978),
cert. dismissed, 439 U.S. 801, 99 S. Ct. 44, 58 L. Ed. 2d 94 (1979),
in which the court stated it could "perceive little, if any,
reason for sequestering a witness who is to testify in an expert
capacity only and not to the facts of the case." Id. at 629.
The Morvant court further held, however, that rule 703 does not
furnish an automatic basis for exempting an expert from sequestration
under rule 615. Id. at 630. We agree. Whether or not it would
be reasonable for a trial court to exempt an expert witness from
a sequestration order, there is no required exemption implied
under rule 615. Exemption would be questionable in a case such
as this, however, where defendants' expert was to testify about
the two works upon which Gene Miller was giving his own similarity
analysis.[**25]
With respect to the contention the witness was exempt under
the express exception provided in subsection (3) of the rule for
persons who are essential to the presentation of a party's case,
defendants never sought an exemption for Professor Sullivan either
before trial or after the violation became known. They only argued
that Professor Sullivan's testimony was crucial to their case.
It also appears that defendants' literary expert is probably not
the type of expert intended to be exempt under this exception.
The Notes of the Advisory Committee on the Proposed Rules suggest
the third category of exempt witnesses contemplates such person
as either an agent who handled the transaction being litigated
or an expert needed to advise counsel in the management of the
litigation. We need not decide the issue, however, because defendants
failed to argue this exception to the trial court and cannot now
raise it on appeal. See Morvant, 570 F.2d at 628 (rejecting an
identical argument for failure to present it to the district court).
Testimony and Cross-Examination of Plaintiff
Over defendants' objection, the trial judge allowed plaintiff
to testify as a lay witness regarding similarities between [**26]
his book and defendants' movie. The court refused to allow defendants
to cross-examine plaintiff and his expert witness regarding similarities
between books they had authored and earlier books by other authors
on the same subject. We perceive no error in either ruling.
The admission of evidence is committed to the sound discretion
of the trial court. United States v. Ashley, 555 F.2d 462 (5th
Cir.), cert. denied, 434 U.S. 869, 98 S. Ct. 210, 54 L. Ed. 2d
147 (1977); United States v. Hearod, 499 F.2d 1003 (5th Cir. 1974).
Fed.R.Evid. 701 is designed specifically to allow lay witnesses
to testify in a conclusory fashion under certain circumstances.
The rule states:
If the witness is not testifying as an expert, his testimony
in the form of opinions or inferences is limited to those opinions
or inferences which are (a) rationally based on the perception
of the witness and (b) helpful to a clear understanding of his
testimony or the determination of a fact in issue.
The plaintiff author in this case was in a unique position
of being intimately familiar with the allegedly infringed work.
We see no abuse of discretion in allowing him to testify on the
similarities between the [**27] book he had written and defendants'
movie.
The district court also did not abuse its discretion in limiting
the scope of defendants' cross-examination of plaintiff and his
expert witness. The thrust of the attempted cross-examination
was to show that plaintiff and his expert had both copied from
previous works in their own writings. Defendants argued to the
trial court the cross-examination was relevant to illustrate that
the use of earlier depictions of historical facts was an accepted
literary practice and to cast doubt on the credibility of the
witnesses' testimony on what constitutes unlawful copying. In
refusing to allow defendants to pose this line of questioning,
the court found it irrelevant to the central [*1375] issue in
the trial: whether defendants' movie infringed plaintiff's copyright.
The district court has wide discretion on matters of relevancy
and materiality of evidence, United States v. Grimm, 568 F.2d
1136 (5th Cir. 1978), and we do not find the determination of
irrelevancy to be reversible error. Even if the evidence was in
some way relevant to the issues at trial, its probative value
was substantially outweighed by the danger of unfair prejudice
and confusion [**28] of the issues, and therefore could be properly
excluded under Fed.R.Evid. 403. The ruling did not prevent defendants
from establishing their fair use defense.
Introduction of Preliminary and Shooting Scripts
To prevail on a claim of copyright infringement, a plaintiff
must prove ownership of the copyright and copying by the alleged
infringer. Ferguson v. National Broadcasting Co., 584 F.2d 111,
113 (5th Cir. 1978); M. Nimmer, 3 Nimmer on Copyright @ 13.01
(1980). Since there is often no direct evidence of copying, it
is ordinarily established by proving access to the copyrighted
material and substantial similarity between the two works. Nimmer,
supra, at @ 13.01(B). A defendant can rebut such a showing by
offering evidence that his work was independently created without
reference to the prior work, since a copyright, unlike a patent,
does not confer an absolute monopoly over the expression but only
a right of control over the works which are derived from the copyrighted
work. Fred Fisher, Inc. v. Dillingham, 298 F. 145 (S.D.N.Y.1924);
M. Nimmer, 2 Nimmer on Copyright @ 8.01. If defendant offers evidence
of independent creation, the plaintiff has the burden of proving
that the [**29] defendant in fact copied the protected material.
Plaintiff in this case sought to prove copying by establishing
access, substantial similarity, and lack of independent creation.
In doing so, he was permitted to introduce into evidence several
preliminary scripts and the script used in filming the movie.
It was not error for the court to allow plaintiff to introduce
the various scripts used in developing the movie. Because of the
different media involved, examination of the various scripts was
relevant to plaintiff's showing of the process by which the book
was transformed into the movie. Moreover, defendants offered testimony
that its movie was created independently from plaintiff's book.
To negate the inference of independent creation, plaintiff offered
the scripts into evidence to show the manner and speed in which
the movie was produced. Thus, the various scripts were relevant
and admissible on the issue of independent creation, even though
the ultimate test of infringement was the film as broadcast. See
Cain v. Universal Pictures Co., 47 F. Supp. 1013 (S.D.Cal.1942);
DeMontijo v. 20th Century Fox Film Corp., 40 F. Supp. 133 (S.D.Cal.1941).
In any event, it is doubtful defendants [**30] were prejudiced
by admission of the early scripts. They had an opportunity to
point out any changes that were made between these scripts and
the movie, and the jury was properly instructed that the question
before them was whether the movie as broadcast was substantially
similar to the book. See Huie v. National Broadcasting Co., 184
F. Supp. 198 (S.D.N.Y.1960).
Cumulative Recovery of Damages and Profits
In accordance with the jury verdict, plaintiff was awarded
$ 185,000 in damages and $ 31,750 in profits earned by defendants
as a result of their unlawful infringement. Defendants assert
the award of both damages and profits was improper.
The Copyright Act of 1909, which governed the trial of this
case, provides that an infringer is liable for "such damages
as the copyright proprietor may have suffered due to the infringement,
as well as all the profits which the infringer shall have made
[*1376] from such infringement." 17 U.S.C. @ 101(b) (1970).
Although the statutory language of section 101(b) explicitly provides
for a cumulative recovery, confusion was engendered by language
in the legislative history of the 1909 Act which indicated the
legislators may have intended only [**31] an alternative recovery.
H.R.Rep.No.2222, 60th Cong., 2d Sess. 15 (1909). In the face of
these contradictory signals, courts have divided on the issue.
Compare Sid & Marty Krofft Television Productions, Inc. v.
McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977); Universal Pictures
Co. v. Harold Lloyd Corp., 162 F.2d 354 (9th Cir. 1947), with
Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409
(2d Cir. 1970), cert. denied, 401 U.S. 977, 91 S. Ct. 1200, 28
L. Ed. 2d 326 (1971); Peter Pan Fabrics, Inc. v. Jobela Fabrics,
Inc., 329 F.2d 194 (2d Cir. 1964); Baldwin Cooke Co. v. Keith
Clark, Inc., 420 F. Supp. 404 (N.D.Ill.1976). The 1976 revision
of the Copyright Act resolved the conflict in favor of cumulative
recovery. See 17 U.S.C.A. @ 504(b).
The question is one of first impression in this Circuit. This
Court generally adheres to the literal statutory language and
has rejected "attempts to use legislative history to override
the unambiguous language of the statute." Brennan v. Taft
Broadcasting Co., 500 F.2d 212, 217 (5th Cir. 1974) (emphasis
in original). See also United States v. Second National Bank of
North Miami, 502 F.2d 535, 539-40 (5th Cir. 1974), cert. denied,
421 U.S. [**32] 912, 95 S. Ct. 1567, 43 L. Ed. 2d 777 (1975).
The language of section 101(b) unambiguously provides for the
recovery of both actual damages and profits. This reading is consistent
with the purpose of copyright law to discourage wrongful infringement
as well as to compensate the copyright owner. See F. W. Woolworth
Co. v. Contemporary Arts, Inc., 344 U.S. 228, 233, 73 S. Ct. 222,
225, 97 L. Ed. 276 (1952); H.R.Rep.No.94-1476, 94th Cong., 2d
Sess. 161, reprinted in (1976) U.S.Code Cong. & Ad.News 5659,
5777. We therefore hold a plaintiff may recover both damages sustained
by him and profits earned by the infringers as a result of unlawful
infringement.
Conclusion
Additional issues raised by defendants on appeal, including
the correctness of the special verdict form, the propriety of
certain comments made by plaintiff's counsel during closing arguments,
and the reasonableness of the attorney's fee award to plaintiff,
need not be decided in light of the remand for a new trial.
REVERSED AND REMANDED.
Footnotes
n1.
Similarly, a copyright protects only the expression of ideas
and not the ideas. The idea-expression dichotomy was given express
statutory recognition in the 1976 Copyright Act. Section 102(b)
provides: "In no case does copyright protection for an original
work of authorship extend to any idea, procedure, process, system,
method of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated,
or embodied in such a work." 17 U.S.C.A. @ 102(b).
n2.
The statutory law applicable to this infringement action is
the Copyright Act of 1909, 17 U.S.C. @ 1 et seq. (1970). Although
Congress revised and recodified the law in the Copyright Act of
1976, 17 U.S.C.A. @ 101 et seq., the legislative history indicates
the revision was not intended to change the scope of copyright
protection under the previous law: "Its purpose is to restate,
in the context of the new single Federal system of copyright,
that basic dichotomy between expression and idea remains unchanged."
House Report on the Copyright Act of 1976, H.R.Rep. 94-1476, 94th
Cong., 2d Sess. 52, reprinted in (1976) U.S.Code Cong. & Ad.News
5659, 5670.
n3.
Huie v. National Broadcasting Co., 184 F. Supp. 198 (S.D.N.Y.1960).
In light of the Second Circuit's decisions in Hoehling v. Universal
City Studios, Inc., 618 F.2d 972 (2d Cir.), cert. denied, 449
U.S. 841, 101 S. Ct. 121, 66 L. Ed. 2d 49 (1980), and Rosemont
Enterprises, Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir.
1966), cert. denied, 385 U.S. 1009, 87 S. Ct. 714, 17 L. Ed. 2d
546 (1967), the decision in Huie can no longer be considered good
law in that circuit, absent wholesale appropriation of expression.
n4.
Under the Copyright Act of 1976, directories fall into the
category of "compilations," copyrightable under 17 U.S.C.A.
@ 103. A compilation is defined as "a work formed by the
collection and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work of
authorship." 17 U.S.C.A. @ 101.
n5.
Fed.R.Evid. 703 provides:
The facts or data in the particular case upon which an expert
bases an opinion or inference may be those perceived by or made
known to him at or before the hearing. If of a type reasonably
relied upon by experts in the particular field in forming opinions
or inferences upon the subject, the facts or data need not be
admissible in evidence.