NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS AUG 1 2018 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT
JON ASTOR-WHITE, an individual, No. 16-55565
Plaintiff-Appellant, D.C. No. 2:15-cv-06326-PA-RAO v.
DANIEL WILLIAM STRONG, AKA MEMORANDUM* Strong; et al.,
Defendants-Appellees.
Appeal from the United States District Court for the Central District of California Percy Anderson, District Judge, Presiding
Argued and Submitted May 14, 2018 Pasadena, California
Before: WARDLAW, NGUYEN, and OWENS, Circuit Judges.
Jon Astor-White appeals from the district court’s Rule 12(b)(6) dismissal of
his first amended complaint. He alleges that defendants’ television series Empire
infringed upon his copyrighted treatment of a television series entitled King
Solomon. We have jurisdiction under 28 U.S.C. § 1291. We review de novo the
district court’s dismissal under Federal Rule of Civil Procedure 12(b)(6),
* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Rentmeester v. Nike, 883 F.3d 1111, 1116–17 (9th Cir. 2018), and we affirm in
part, reverse in part, and remand.
1. Although Astor-White did not plead sufficient facts to state a claim
for copyright infringement, the district court abused its discretion by denying
Astor-White the opportunity to amend his pro se first amended complaint.
Dismissal with prejudice is appropriate only if a complaint “could not be saved by
any amendment.” Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 532 (9th
Cir. 2008). Here, that is not the case.
2. To state a claim for copyright infringement, Astor-White must
establish facts plausibly showing that the defendants copied the protected elements
in his literary work. See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th
Cir. 2000). A plaintiff may satisfy this element by showing either that the two
works in question are strikingly similar, or by showing that they are substantially
similar and that the defendant had access to the plaintiff’s work. See id. at 481,
485. In the absence of direct evidence of access, a plaintiff can show that a chain
of events linked the protected work to the defendant, or that the work had been
widely disseminated. See id. at 482. Astor-White’s first amended complaint did
not adequately allege copying of a protected work under any of these theories.
3. However, Astor-White could have amended his first amended
complaint to cure this deficiency in several ways, and he requested that he be
2 allowed to do so. To allege striking or substantial similarity, Astor-White could
have alleged facts specifically showing the similarities between the two works and
therefore presented “a triable issue of fact regarding substantial similarity of
protected expression.” See Shaw v. Lindheim, 919 F.2d 1353, 1363 (9th Cir.
1990). Astor-White’s second amended complaint could focus on the similarities,
particularly important where the author of a treatment alleges infringement by a
now full season-long series.1 “Even if a copied portion [of a work] be relatively
small in proportion to the entire work, if qualitatively important, the finder of fact
may properly find substantial similarity.” Id. (quoting Baxter v. MCA, Inc., 812
F.2d 421, 425 (9th Cir. 1987)). And to allege access, as Astor-White’s briefing
demonstrates, Astor-White could plead facts describing a plausible chain of events
linking the King Solomon treatment to defendants. Because these allegations could
cure the first amended complaint’s deficiencies, the district court’s conclusion that
another amendment would be futile was incorrect.
AFFIRM IN PART; REVERSE IN PART; and REMAND. 2
Each side shall bear its own costs of appeal.
1 Only the first season of Empire is under consideration. 2 Because we find that the district court did not err in dismissing this action based on the facts alleged in the pro se first amended complaint, but did abuse its discretion in denying leave to amend, we do not reach whether it also erred in declining to consider expert testimony regarding substantial similarity.
3 FILED Astor-White v. Strong, No. 16-55565 AUG 1 2018 WARDLAW, Circuit Judge, concurring: MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS
The district court and the dissent’s determination of futility on the basis of
the lack of substantial similarity threatens the copyright protection for treatments,1
long recognized as a genre of protected literary works, 17 U.S.C. § 102(a)(1), and
disregards their very nature. Moreover, dismissal of a complaint for lack of
substantial similarity before any discovery is virtually unheard of. 2 The dissent
relies exclusively on cases decided at the summary judgment stage, with one
notable exception, Rentmeester v. Nike Inc., 883 F.3d 1111 (9th Cir. 2018), a case
1 A treatment is a brief written work, typically under twenty-five pages, that embodies the writer’s idea and normally contains the title, basic plot, characters, episode ideas, or more. 6 Thomas D. Selz et al., Entertainment Law 3d Appendix I (2017); Marc S. Lee, Entertainment and Intellectual Property Law § 11:9 (2017); How to Write a Film Treatment, http://www.tft.ucla.edu/mfadirectingscholarship- treatment-example/ (last visited July 20, 2018). 2 Indeed, our court has never affirmed the dismissal of a case alleging infringement of a literary work without discovery in a published opinion. The only cases affirming a dismissal for lack of substantial similarity are Rentmeester v. Nike Inc., 883 F.3d 1111 (9th Cir. 2018), which involved photographs, and Christianson v. West Pub. Co., 149 F.2d 202 (9th Cir. 1945), which involved maps.
Moreover, we have applied the substantial similarity test to a treatment in only one case, Berkic v. Crichton, which was at the summary judgment stage, and involved a fifty-four page treatment—substantially longer than the six page King Solomon treatment. Berkic v. Crichton, 761 F.2d 1289 (9th Cir. 1985); cf. Metcalf v. Bochco, 294 F.3d 1069 (9th Cir. 2002) (applying the substantial similarity test at summary judgment comparing both a treatment and script to a television series, but not applying the test to the treatment alone). involving photographs, which fall within an entirely separate subject matter of
copyright protection, pictorial, graphic and sculptural works, 17 U.S.C. §
102(a)(5). And Rentmeester, which justified its dismissal “because the two
[works] are properly before us and thus capable of examination and comparison,”
Rentmeester, 883 F.3d at 1123 (quotation omitted), is itself under question, as its
approach is not found anywhere else in Ninth Circuit precedent, except a case
which did a “side-by-side” comparison of two maps of the United States.
Christianson v. West Pub. Co., 149 F.2d 202 (9th Cir. 1945).
Not many laypersons, much less judges, are trained in the process of
developing a short treatment into a fully developed television show. What the
district court did here illustrates that comparing a treatment to a completed work
requires specialized knowledge of how treatments are developed into completed
television shows. In its side-by-side comparison of the copyright-registered six
page treatment of King Solomon to a full season one of Empire, the district court
found repeated differences. 3 But of course differences are inevitable, because
change is exactly what happens as a treatment is developed into a fully realized
3 Though opinions have often evaluated differences between works when applying the substantial similarity test, See e.g., Funky Films, 462 F.3d at 1078, the test requires evaluating the “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.” Kouf v. Walt Disney Pictures and Television, 16 F.3d 1042, 1045 (9th Cir. 1994).
2 work. See Thomas D. Selz et al., Entertainment Law 3d § 20:3 (2017) (noting that
a story’s development continues even after a script is completed, and as a result a
film may depart from the final script). What the district court should have focused
on were the similarities that remained throughout the development process.
Moreover, neither the district court nor the dissent acknowledge the
revolutionary nature of Astor-White’s treatment at the time it was written. While
diversity in television still has a long way to go, a lot has changed on primetime
television in the 11 years since Astor-White wrote the treatment for King Solomon.
In the decades prior, black families were mostly represented, if at all, on sitcoms. 4
Only 6 years ago, in 2012, did Kerry Washington debut as Olivia Pope in Scandal
on the ABC network as the first black female lead in almost 40 years. 5 The rise of
TV shows featuring complex, black lead characters is recent, and Astor-White
created King Solomon on the revolution’s precipice. Both King Solomon and
Empire are about a black record business mogul with complex family dynamics
and who competes with a rival record company owned by a white man involved in
4 Britt Julious, Family Matters: How Shows Like Empire Are Redefining Black Families on TV, GQ (Oct. 27, 2016), https://www.gq.com/story/family-matters- how-shows-like-empire-are-redefining-black-families-on-tv. 5 Angelica Jade Bastién, Claiming the Future of Black TV, The Atlantic (Jan. 29, 2017), https://www.theatlantic.com/entertainment/archive/2017/01/claiming- the-future-of-black-tv/514562/
3 organized crime. Empire premiered in 2015 and is credited “as one of the clear
and first runaway hits for representation of black people” and “represent[s] a
dynamic, that for the most part, has not been seen.”6 The district court dismissed
this claim on the basis that the storyline in King Solomon and its many similarities
with Empire were generic. However, judges have no particular expertise in
determining what is and is not generic in cases like these, where the judge could
not have seen a similar show at the time it was written. Discovery and the
expertise of persons who understand the landscape of television at the time King
Solomon was written would have greatly informed the decision as to substantial
similarity.
That is why I do not think that amendment was futile. The complaint was
prepared pro se by Mr. Astor-White himself; the district court judge performed the
entire substantial analysis himself, in chambers, without the benefit of even a
hearing, much less discovery and an expert witness. Finally, substantial similarity
is “a question of fact uniquely suited for determination by the trier of fact.” Jason
v. Fonda, 526 F. Supp. 774, 777 (C.D. Cal. 1981), incorp’d by ref, 698 F.2d 966
(9th Cir. 1982). Thus, summary judgment “is not highly favored on the substantial
similarity issue in copyright cases,” Funky Films, 462 F.3d 1072, 1076 (9th Cir.
2006) (quotations omitted), and should be even more disfavored on a motion to
6 Julius, supra note 4.
4 dismiss.
5 FILED Astor-White v. Strong, No. 16-55565 AUG 1 2018 MOLLY C. DWYER, CLERK NGUYEN, Circuit Judge, concurring in part and dissenting in part: U.S. COURT OF APPEALS
I agree with the majority that the district court properly dismissed Astor-
White’s first amended complaint. However, I would also affirm the denial of leave
to amend. Because Empire and King Solomon are not substantially similar as a
matter of law, amendment would be futile.
As we recently clarified in Rentmeester v. Nike, Inc., 883 F.3d 1111 (9th Cir.
2018), there are two distinct aspects to copying protected expression: 1) actual
copying1 that is 2) unlawful. See id. at 1117; id. at 1124 (“[A]fter proving that the
defendant’s work is the product of copying rather than independent creation, the
plaintiff must still show copying of protected expression that amounts to unlawful
appropriation.”). The majority discusses only the first aspect—actual copying.
And while it may be that Astor-White could plead additional facts to show the
defendants had access to his treatment or that there are otherwise enough
similarities between the works to give rise to an inference of copying, this does
nothing to satisfy the second aspect—unlawful appropriation. See id. at 1124–25.
1 As the majority notes, Maj. at 2, copying can be established by showing a defendant had access to the work and/or that the number of similarities in the works make it implausible that the works were developed independently of one another. See Rentmeester, 883 F.3d at 1117, 1124; Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481, 485 (9th Cir. 2000). 1 As to unlawful appropriation, the court must apply the extrinsic test, the first
step of which is to “filter out and disregard” what is not protectable in the allegedly
infringed-upon work. See Cavalier v. Random House, Inc., 297 F.3d 815, 822 (9th
Cir. 2002); see also Rentmeester, 883 F.3d. at 1118–19. This is critically
important; we “must take care to inquire only whether the protectable elements,
standing alone, are substantially similar.” Funky Films, Inc. v. Time Warner
Entm’t Co., 462 F.3d 1072, 1077 (9th Cir. 2006) (internal quotation marks
omitted). “It is well established that, as a matter of law, certain forms of literary
expression are not protected against copying.” Berkic v. Crichton, 761 F.2d 1289,
1293 (9th Cir. 1985). These include “the general idea for a story” and “all
situations and incidents which flow naturally from a basic plot premise.” Id.; see
also Frybarger v. Int’l Bus. Machs. Corp., 812 F.2d 525, 529 (9th Cir. 1987).
After filtering out the unprotectable elements of the “plot, themes, dialogue, mood,
setting, pace, characters, and sequence of events” of two works, we see whether
any “articulable similarities” remain. Rice v. Fox Broad. Co., 330 F.3d 1170, 1174
(9th Cir. 2003) (internal quotation marks omitted).
The district court did just that here and correctly concluded that the two
works are not substantially similar as a matter of law.2 The overarching ideas of “a
2 Whether an element of a work is protectable is a question of law. While expert testimony may be helpful for the factual question of whether protectable elements are substantially similar, there is no need for an expert where, like here, 2 Black Record Business Mogul and his family” and “the inner-workings of the
billion dollar record business, and [its] effects on the [] family” are common
between the two works. In fact, this is the main similarity. This idea is not
protectable. See Funky Films, 462 F.3d at 1081 (no copyright protection for ideas
of “the family-run funeral home, the father’s death, and the return of the ‘prodigal
son,’ who assists his brother in maintaining the family business”); Cavalier, 297
F.3d at 824 (no copyright protection for “general premise of a child, invited by a
moon-type character, who takes a journey through the night sky and returns safely
to bed to fall asleep”); Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1450 (9th Cir.
1988) (no copyright protection for idea of “group action-adventure series designed
to show Vietnam veterans in a positive light”); Berkic, 761 F.2d at 1293 (no
copyright protection for ideas of “criminal organizations that murder healthy
young people, then remove and sell their vital organs to wealthy people in need of
organ transplants” or “the adventures of a young professional who courageously
investigates, and finally exposes, the criminal organization”); Jason v. Fonda, 526
F. Supp. 774, 777 (C.D. Cal. 1981), incorp’d by reference, 698 F.2d 966, 967 (9th
there are no protectable similarities between the two literary works. See, e.g., Benay v. Warner Bros. Entm’t, 607 F.3d 620, 625–29 (9th Cir. 2010) (deciding there was no substantial similarity as a matter of law by comparing screenplay and film without reference to expert testimony); Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1076–81 (9th Cir. 2006) (same, for screenplay and television series); Berkic v. Crichton, 761 F.2d 1289, 1293–94 (9th Cir. 1985) (same, for screenplay and movie). 3 Cir.1982) (no copyright protection for ideas “deal[ing] generally with subjects such
as morality and the effects of war on women, injured veterans and soldiers”).
Nor are there protectable similarities in the plot, sequence of events, setting,
or characters. The plots of both works involve the daily operation of a black
record mogul’s family business. “Aside from that rather uneventful similarity, the
plots of the two stories develop quite differently.” See Funky Films, 462 F.3d at
1078. The major plot points identified in the King Solomon treatment do not
appear in Empire—namely, Joe dropping out of college; Jenny’s burgeoning career
as an actress and King’s disapproval of it; Jenny’s elaborate birthday party; Jake
returning to his life of crime; the large role of the rival company, its backstory of
being funded by the mob, and its forcing the company’s artists to partake in the
mob’s business endeavors; and the negotiation (and renegotiation) between King
and his difficult artists. 3 The general plot points that do occur in both works
happen in different orders. For instance, Cookie is released from prison at the
beginning of the series, whereas Jake is not released from prison until later; and
King long-ago remarried his childhood sweetheart and started a family with her,
3 On the other hand, the first three major plot points in Empire are Lucious’s ALS diagnosis, Cookie’s release from prison, and the company going public. 4 whereas Lucious proposes to Anika part-way through the season and his children
are with Cookie. 4
King Solomon is set in Hollywood, and Empire is set in New York. Los
Angeles and New York are both urban centers that have large entertainment
scenes, but these traits are necessary to the idea that the shows are about an
entertainment mogul. See Cavalier, 297 F.3d at 824 (holding that the setting of the
night sky “naturally and necessarily flow[ed] from the basic plot premise of a
child’s journey through the night sky; therefore, the night sky setting constitutes
scenes-a-faire and cannot support a finding of substantial similarity”). Of course,
Hollywood and New York are not the same place, despite some shared
characteristics.
Finally, numerous character traits and story lines outlined in King Solomon
are not present, or are presented differently, in Empire. King is Harvard-educated,
while Lucious learned the industry as a rapper himself, and Cookie is a co-
protagonist with Lucious in Empire who does not appear to have a counterpart in
King Solomon. See Funky Films, 462 F.3d at 1078–79 (rejecting appellants’
“attempt to link up” the main characters in the works because the expression of the
generic traits of those characters was different and highlighting the difference in
4 There is not a “sufficiently concrete” or “particular” sequence to these similarities to warrant a substantial similarity finding under Metcalf v. Bochco, 294 F.3d 1069 (9th Cir. 2002). 5 “complexity” of the allegedly comparable characters). And King Solomon uses
“actual recording stars appearing and performing their hits, or introducing their
new material”—a major component of the show, per the treatment—but Empire
has its own actors play the recording artists and clients, features original music,
and only has real stars on once in a while.
I am concerned that the majority’s failure to apply the extrinsic test will
create confusion for the parties and the district court on remand. The majority
states that the “second amended complaint could focus on the similarities” between
the two works. Maj. at 3. But what additional facts could change the outcome
here? Both works were before the district court (as they are now before us) for
review. The extrinsic test requires us to review the works, filter out unprotectable
elements, and then decide as a matter of law whether the remaining similarities are
sufficiently substantial to allow Astor-White to proceed with his copyright
infringement claim. Yet the majority does not engage with how or why the district
court should come to a different conclusion regarding unlawful appropriation the
second time around, nor do I think it could.
I would affirm the dismissal without leave to amend.