Stromback v. New Line Cinema

• Court: Court of Appeals for the Sixth Circuit
• Decided: September 14, 2004
• Docket: 02-2388
• Status: Published

Opinion

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

1 Nos. 02-2387/2388 Stromback v. New 3 4 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

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

3 2 Stromback claims that the reader can infe r that the p olitician with In its opinion, the district court stated that it was adopting whom Ted's birth mother had the affair was Governor John's father, Stromb ack's description of the two works in light of the fact that it was making Governor Jo hn Ted's evil brother or half-brother. However, the deciding substantial similarity at the summary judgment stage. only basis for this inference is Stromback's subjective reading of the text. Nos. 02-2387/2388 Stromback v. New 5 6 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

portrayed as a power hungry politician who does no real work Little Nicky and whose ambition is to become president and take over the world. Ted believes that Governor John is "cocky and Little Nicky is a "comedy" about the Devil, "Satan," and his arrogant" as well as evil, and at various times Ted refers to three sons: "Casius," the strong, tough son; "Adrian," the Governor John as the devil. Ted begins a campaign against smart, ruthless son; and "Nicky," the weaker, sweet son, who Governor John by sending anonymous rhyming riddles to the also has a speech impediment caused by his brother hitting national paper that the newspaper prints in its editorial page. him in the face with a shovel. Adrian and Casius frequently Eventually it is revealed that Ted has been reading about a pick on Nicky and "mind wrestle" with him, causing him to "Jokela murder case," in which a reporter ("Jokela") was do or say things against his will. The grandfather, "Lucifer" murdered in the same basement in which Ted now works. (Rodney Dangerfield), appears occasionally but does not Jokela discovered that the then-secretary of state (Governor really interact with Nicky. John's father) was involved in a cult having "some thing to do with the devil." Governor John's father was the prime suspect The movie opens with Satan trying to decide if he should in the murder but "got off the hook and the case never went to retire after 10,000 years of rule. If he does, one of his sons trial." He went on to have a distinguished career as Governor. would take over Hell. Casius and Adrian both want the job. Ted knows that Governor John's father was responsible for Nicky does not want it and prefers that his father keep the job. the murder and includes clues about it in his riddles. Satan decides to keep the job and rule for another 10,000 years in order to maintain the balance between good and evil Governor John reads the riddles and eventually catches on (he does not believe that his sons are capable of doing this). that the author is out to get him. The Governor and his Casius and Adrian are furious at this decision and plan to henchmen decide to kill "that rhyming dude." Ted reveals escape to Earth, where they will try to corrupt as many souls himself to the Governor and dares him to "get me if you can." as possible (to threaten the balance between good and evil) in Governor John arranges for three individuals to find and their quest to assume control. During their escape, Casius and murder Ted at the national paper. However, Ted sets a trap in Adrian travel through a wall of fire, by which damned souls which he uses his "good friend," "Scott," to trick the hit-man are intended to fall into, but not leave, Hell. Adrian and into thinking that Scott is actually Ted. The hit-man ends up Casius cause the wall of fire to freeze and a logjam of souls killing Scott. Having video-taped the murder, Ted tells a ensues outside the wall of fire. Without new souls entering, dying Scott: "I needed you, you were a good friend, but Satan begins to decompose. His only hope is to send Nicky everybody needs a ladder to get to the top. You're my ladder to Earth to force his brothers to drink from a magic flask, in scott [sic]." which they will be trapped. Once he has his brothers inside the flask, Nicky must pass through the wall of fire and return Ted shows the tape of the murder to the police, who to Hell, which will save Satan. eventually link the murder to Governor John. The story ends with the Governor going to jail and Ted being elected as the Nicky travels to New York City, where Satan's friend, a Governor of California. On election night Sue goes to Ted's talking dog, "Beefy," serves as Nicky's guide. Nicky is also hotel room, where he rapes her. Sue has no recourse because assisted by two cult-worshiping "groupies" named "John" and Ted now has the power. Ted calls Sue a "bitch" as she leaves. "Pete." Beefy, John, and Pete all want Nicky to "release his inner evil" in order to overpower Casius and Adrian. Nicky Nos. 02-2387/2388 Stromback v. New 7 8 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

has a difficult time finding his brothers because they hide by Stromback filed his complaint on October 15, 2001, and randomly "possessing" humans. Casius possesses the Mayor filed an amended complaint in December 2001.4 Stromback's of New York and lowers the drinking age from 21 to 10, amended complaint alleged claims for copyright causing chaos. All three of them have a difficult time infringement; reverse passing off in violation of the Lanham adapting to Earth's cold weather. Act; commercial misappropriation; breach of quasi contract; misappropriation of trade secrets; breach of the implied duty While on Earth, Nicky meets and falls in love with a of good faith and fair dealing; unfair competition/unjust woman named "Valerie." During a chance encounter, Adrian enrichment; and interference with prospective economic mind wrestles with Nicky and causes him to insult Valerie. advantage. On September 13, 2002, NLC, the only remaining However, Nicky wins back Valerie's affection by telling her defendant, moved for summary judgment. At that time, the the truth about his family and mission on Earth. During the case had been pending for about a year and Stromback had story, Nicky is killed several times (e.g., by a train or bus) and not sought a Rule 16 conference with the district court, nor is sent back to Hell, where he is re-dispatched to Earth. The had he sought any discovery. In his response, Stromback final time, Nicky dies trying to save Valerie and goes to argued that summary judgment should be denied because he Heaven. There, he meets an angel named "Holly," who turns needed to conduct discovery on whether the various out to be his mother. Holly tells Nicky that she met Satan at screenplays leading up to the final product (the movie) a "Heaven and Hell Mixer." Holly tells Nicky releasing his infringed on "The Keeper" poem or screenplay. The district inner good is the key to victory over his brothers. Holly also court found that the movie was the only relevant work gives Nicky a magic sphere from God for Nicky to use when because only the movie, and not the various versions of the it is time. screenplays leading up to the movie, were published to the public and because Stromback alleged in his amended Nicky manages to trap Casius in the magic flask, but complaint only that the movie was an infringing work. The Adrian has assumed the throne of Hell and has caused Hell to district court concluded that NLC was entitled to summary rise through Central Park in New York. At the stroke of judgment on the copyright infringement and Lanham Act midnight, all of New York's souls will be damned and belong claims because no reasonable jury could find that "Little to Adrian in Hell. Nicky uses the magic sphere, releasing Nicky" is substantially similar to "The Keeper" poem or "good" versus "evil." Nicky smashes the magic sphere and screenplay. The district court also concluded that summary Ozzy Osbourne (a rock star with a reputation for biting the judgment was proper on Stromback's state law claims on the heads off bats) appears and bites off Adrian's head (who basis that they are preempted by § 301 of the Copyright Act. appears in the form of a bat) and spits it into the magic flask. Nicky then commits one last superficially bad act to ensure that he will be sent to Hell. Valerie tells Nicky that she loves him and then smashes him on the head with a rock (out of love) to kill him and send him back to Hell. Satan is saved and the balance between good and evil is restored. Satan 4 sends Nicky back to Earth to be with Valerie and they have a In addition to alleging that "Little Nicky" infring ed "The Keeper," Stromback also initially alleged that the movie "Mr. Deeds" was an son and live happily ever after. infringing work. Stromback eventually dropped the allegation regarding "M r. Deeds." Nos. 02-2387/2388 Stromback v. New 9 10 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

II. ANALYSIS Since direct evidence of copying is rarely available, a plaintiff may establish "an inference of copying by showing A. Standard of Review (1) access to the allegedly-infringing work by the defendant(s) and (2) a substantial similarity between the two Stromback contends that the district court erred in granting works at issue." Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. summary judgment to NLC on his various claims. In 1999); see also Arica Inst., Inc. v. Palmer, 970 F.2d 1067, reviewing a district court's grant of summary judgment, this 1072 (2d Cir. 1992). "Access is essentially 'hearing or having Court applies a de novo standard. See E.I. Du Pont De a reasonable opportunity to [view] the plaintiff['s] work and Nemours & Co. v. Okuley, 344 F.3d 578, 584 (6th Cir. 2003). thus having the opportunity to copy.'" Ellis, 177 F.3d at 506 Summary judgment is proper only if there is no genuine issue (quoting Tree Publ'g Co. v. Warner Bros. Records, 785 F. as to any material fact and the moving party is entitled to Supp. 1272, 1274 (M.D. Tenn. 1991)). In Ellis, we observed judgment as a matter of law. See Fed. R. Civ. P. 56(c). The that in some cases the relationship between the degree of proper inquiry is whether the evidence is such that a proof required for similarity and access may be inversely reasonable jury could return a verdict for the plaintiff. See proportional: where the similarity between the two works is Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S. strong, less compelling proof of access may suffice, and vice- Ct. 2505, 2512 (1986). versa. Id. at 507. See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 485 (9th Cir. 2000) (stating that under the "inverse B. Copyright Infringement Claim ratio rule," a lower standard of proof of similarity is required where a high degree of access is shown); Arnstein v. Porter, The Copyright Act provides protection for original works 154 F.2d 464, 469 (2d Cir. 1946) (stating that "a case could of authorship expressed in various media. 17 U.S.C. §§ 101- occur in which the similarities were so striking that we would 1332. Subject to certain exceptions not applicable here, the reverse a finding of no access, despite weak evidence of owner of a copyright has the exclusive rights (1) to reproduce access (or no evidence thereof other than the similarities)"). the copyrighted work; (2) to prepare derivative works; (3) to For purposes of its motion for summary judgment, NLC distribute copies; (4) to perform publicly a copyrighted work; conceded the issue of access, electing to focus solely on the and (5) to display publicly a copyrighted work. 17 U.S.C. issue of substantial similarity of the two works. § 106. A plaintiff may bring a claim against a person who infringes any of the plaintiff's exclusive rights in a copyright In ruling on NLC's motion, the district court observed, under § 106 by demonstrating two elements: "(1) ownership correctly, that the Sixth Circuit had not formally adopted a of a valid copyright; and (2) copying of constituent elements specific test or approach for determining substantial similarity of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. in copyright cases. Drawing on statements in Diffie as well Serv. Co., 499 U.S. 340, 361, 111 S. Ct. 1282, 1296 (1991); as prior decisions from the Eastern District of Michigan, the accord Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir. 2003). district court applied the "ordinary observer" test, which The parties do not dispute Stromback's ownership of a valid allows the trier of fact to gauge his "net impression" of the copyright in "The Keeper" poem and screenplay. Thus, two works by conducting a side-by-side comparison without copying is the only issue in dispute. the benefit of expert testimony or dissection. (Dist. Ct. Op. at 8.) The district court rejected Stromback's argument that it should apply the two-part test employed by the Ninth Circuit, Nos. 02-2387/2388 Stromback v. New 11 12 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

which consists of an extrinsic test and an intrinsic test, see Sid F.3d 1042 (9th Cir. 1994)], the first part of our test & Marty Krofft Television Prods., Inc. v. McDonald's Corp., remains more free in form than the Ninth Circuit's 562 F.2d 1157, 1164 (9th Cir. 1977), although the district extrinsic test. court did state that summary judgment would be improper at that stage if the Sixth Circuit employed the "extrinsic" test Id. In addition, for purposes of summary judgment, the Ninth because expert discovery had not occurred. Subsequent to the Circuit considers only the extrinsic test, while the intrinsic district court's opinion and order granting summary judgment test is reserved for the jury. See Kouf, 16 F.3d at 1045 ("A and dismissing the case, this court adopted a two-part test in plaintiff avoids summary judgment by satisfying the extrinsic Kohus v. Mariol, 328 F.3d 848 (6th Cir. 2003), which follows test which makes similarity of the works a triable issue of the test employed by the D.C. Circuit in Sturdza v. United fact."). In contrast, a court considers both parts of our test in Arab Emirates, 281 F.3d 1287 (D.C. Cir. 2002). We stated determining substantial similarity on a motion for summary that "the first step 'requires identifying which aspects of the judgment. See Kohus, 328 F.3d at 857-58 (discussing the artist's work, if any, are protectible by copyright,' [and] the district court's analysis on remand under both prongs of the second 'involves determining whether the allegedly infringing test). This remains consistent with our prior observation that work is"substantially similar" to protectible elements of the while summary judgment in favor of a defendant in a artist's work.'" Kohus, 328 F.3d at 855 (quoting Sturdza). copyright case is a practice that should be used sparingly, in This test is really just a refinement of the ordinary observer an appropriate case, "a court may compare the two works and test that, as its initial step, parses from the work the elements render summary judgment for the defendant on the ground neither afforded copyright protection nor properly considered that as a matter of law a trier of fact would not be permitted in the ordinary observer test. "The essence of the first step is to find substantial similarity." Wickham v. Knoxville Int'l to filter out the unoriginal, unprotectible elements–elements Energy Exposition, Inc., 739 F.2d 1094, 1097 (6th Cir. 1984) that were not independently created by the inventor, and that (citations omitted); accord Kohus, 328 F.3d at 853. possess no minimal degree of creativity, through a variety of analyses." Id. (citation omitted). Our test is similar to the Our decision in Kohus answers one of Stromback's central Ninth Circuit's test, because the first part, like the Ninth arguments on appeal, namely, that the district court erred by Circuit's extrinsic test, requires a determination of only the conducting a side-by-side comparison of the two works rather expressive elements of a work, while the second part, like the than applying the extrinsic/intrinsic test or some other test Ninth Circuit's intrinsic test, asks whether the ordinary, that allows for analytic dissection of what Stromback reasonable observer would find the works, taken as a whole, characterizes as "complex copyright subject matter." Though to be substantially similar. Murray Hill Publ'ns, Inc. v. the district court failed to apply the proper two-part test, we Twentieth Century Fox Film Corp., 361 F.3d 312, 318 (6th need not remand the case because the issue presented is one Cir. 2004). of law. See, e.g., Chase Manhattan Bank, N.A. v. Am. Nat'l Bank & Trust Co., 93 F.3d 1064, 1072 (2d Cir. 1996) ("An However, significant differences remain in both parts. appellate court has the power to decide cases on appeal if the In particular, we apply a more stringent standard facts in the record adequately support the proper result or if regarding when to allow expert testimony on the first part the record as a whole presents no genuine issue as to any of the test. Also, not having adopted the eight Kouf material fact. . . . Thus, if we find that a party must prevail as factors [Kouf v. Walt Disney Pictures & Television, 16 a matter of law, a remand is unnecessary.") (internal quotation Nos. 02-2387/2388 Stromback v. New 13 14 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

marks and citations omitted); Trierweiler v. Croxton & "will assist the trier of fact to understand the evidence or to Trench Holding Corp., 90 F.3d 1523, 1539 (10th Cir. 1996) determine a fact in issue." However, where, as here, the ("In the present case, the debate is purely legal, and remand subject matter is not complex or technical, such as a computer on this issue is unnecessary"). That is, the district court program or a functional object, see, e.g., Gates Rubber Co. v. applied the ordinary observer test – the second part of the Bando Chem. Indus., Ltd., 9 F.3d 823, 834-35 (10th Cir. Kohus test – without first filtering out the unoriginal, 1993) (noting that in most cases involving computer programs unprotectible elements of "The Keeper" poem and screenplay. expert testimony will be helpful to the court in applying an To the extent that the district court considered both abstractions test), but instead involves a literary work aimed protectible and unprotectible elements of Stromback's works, at a general audience, expert testimony will seldom be the inquiry for purposes of this appeal remains the same – necessary to determine substantial similarity. See Nichols v. whether the district court's conclusion of no substantial Universal Pictures Corp., 45 F.2d 119, 123 (1930) (Hand, similarity was correct.5 Learned) ("[Expert testimony] ought not to be allowed at all; and while its admission is not a ground for reversal, it Nor is remand required for consideration of expert cumbers the case and tends to confusion, for the more the testimony, as the district court believed might be the case court is led into the intricacies of dramatic craftsmanship, the under the extrinsic/intrinsic test. Even in the Ninth Circuit less likely it is to stand upon the firmer, if more naive, ground expert testimony is not a requisite for a copyright of its considered impressions upon its own perusal."); infringement case. See Apple Computer, Inc. v. Microsoft Kindergartners Count, Inc. v. Demoulin, 249 F. Supp. 2d Corp., 35 F.3d 1435, 1443 (9th Cir. 1994) (stating that a court 1214, 1232 (D. Kan. 2003) ("Unlike technical computer may use expert testimony, "if necessary," to determine programs, the trier of fact does not need an expert to compare whether any of the allegedly similar features are subject to two literary works that are expressed in simple English."); copyright protection). Our test "appl[ies] a more stringent Costello v. Loew's Inc., 159 F. Supp. 782, 789 (D.D.C. 1958) standard regarding when to allow expert testimony on the first ("No amount of expert or lay testimony as to fancied part of the test." Murray Hill Publ'ns, Inc., 361 F.3d at 318. similarities could change the obvious content of the exhibits We remanded in Kohus in part because the copyright involved before the court . . . . Nor could expert testimony affect the a latch for a portable children's play yard, and we thought that spontaneous and immediate impression of the plaintiff's and expert testimony would be necessary to determine whether defendant's literary works upon the mind of the ordinary certain elements of such a latch should be excluded from the observer."). Therefore, we reject Stromback's suggestion that substantial similarity analysis. See Kohus, 328 F.3d at 856. expert testimony is necessary in this case. Whether expert testimony should be allowed in a particular case remains a matter committed to the discretion of the trial 1. Filtering of Unprotected Elements court under Federal Rule of Evidence 702 if such testimony Although there is no clear line separating protected from nonprotected work, two principles help to guide that 5 determination in this case. See Kohus, 328 F.3d at 855-56. Although the district co urt did not pu rport to apply the two-part test, First, copyright protection extends only to expression of ideas it in fact did so as part of its analysis when it observed that many of the alleged similarities, such as the concepts of Hell and the devil, are too and not to ideas themselves. 17 U.S.C. § 102(b); Mazer v. com mon place and not pro tected. Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 470 (1954) ("Unlike Nos. 02-2387/2388 Stromback v. New 15 16 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

a patent, a copyright gives no exclusive right to the art parties, alcohol, co-eds, and wild behavior are natural disclosed; protection is given only to the expression of the elements in a story about a college fraternity. Similarly, idea – not the idea itself."). "Ideas are free to the world, and "[e]lements such as drunks, prostitutes, vermin and derelict one person's idea can be appropriated by another with cars would appear in any realistic work about . . . policemen impunity." Taylor v. Metro-Goldwyn-Mayer Studios, 115 F. in the South Bronx," and therefore are not afforded copyright Supp. 156, 157 (S.D. Cal. 1953). "[N]o author may copyright protection. Walker v. Time Life Films, 784 F.2d 44, 50 (2d facts or ideas. The copyright is limited to those aspects of the Cir. 1986); see also Murray Hill Publ'ns, Inc, 361 F.3d at work – termed "expression" – that display the stamp of the 319-20 (citing examples). author's originality." Feist Publ'ns, 499 U.S. at 350, 111 S. Ct. at 1290 (quoting Harper & Row, Publishers, Inc. v. Stromback relies upon numerous examples to support his Nation Enters., 471 U.S. 539, 547, 105 S. Ct. 2218, 2224 claim of substantial similarity between the works. As (1985)) (internal quotation marks omitted). The abstraction Stromback concedes, however, many of these elements are test articulated by Judge Learned Hand in Nichols v. superficial, e.g., the Hell/dungeon setting, the sequence of Universal Pictures Corp., 45 F.2d 119 (1930), provides some certain events (main characters leaving Hell, battling their guidance in divining protected expression: brother, the attempted killing of the main character), racial allusions and a love interest. These are common themes and Upon any work, and especially upon a play, a great ideas throughout literature and are beyond any level of number of patterns of increasing generality will fit abstraction at which copyright protection might begin to equally well, as more and more of the incident is left out. attach. See Cavalier v. Random House, Inc., 297 F.3d 815, The last may perhaps be no more than the most general 823 (9th Cir. 2002) ("Familiar stock scenes and themes that statement of what the play is about, and at times might are staples of literature are not protected."). The same is true consist only of its title; but there is a point in this series for character traits or descriptions such as "whacked," "odd," of abstractions where they are no longer protected, since "misfit," "evil," or "conflicted"; themes, such as saving the otherwise the playwright could prevent the use of his world, the battle between good and evil, sibling rivalry or "ideas," to which, apart from their expression, his familial secrets and issues, and racial issues; scenes, such as property is never extended. parties; concepts, such as a dam or barrier between Earth and Hell; and plots, such as foiling the antagonist's attempt to rule Id. at 121. The test itself does not identify protectible the world. See generally Nichols, 45 F.2d at 122 ("A comedy elements of a work, but instead is a tool for accomplishing based upon conflicts between Irish and Jews, into which the that task. Kohus, 328 F.3d at 855. marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet."); Whitehead Second, the principle of scenes a faire excludes copyright v. Paramount Pictures Corp., 53 F. Supp. 2d 38, 49 (D.D.C. protection for "incidents, characters or settings which are as 1999) ("The general concept of an interracial relationship . . . a practical matter indispensable, or at least standard, in the is not copyrightable.") (citing Matthews v. Freedman, 157 treatment of a given topic." Atari, Inc. v. N. Am. Philips F.3d 25, 27 (1st Cir. 1998)). These elements are too general Consumer Elecs. Corp., 672 F.2d 607, 616 (7th Cir. 1982); to qualify for copyright protection. see also 4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright ("Nimmer") § 13.03[F][3] (2004). For example, Nos. 02-2387/2388 Stromback v. New 17 18 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

2. Comparing the Works ordinary lay observer would find them substantially similar to one another. See, e.g., Ellis, 177 F.3d at 506 n.2. After filtering out the unprotectible elements such as ideas and scenes a faire, the final step is to determine whether the Having reviewed "The Keeper" poem and screenplay and allegedly infringing work is "substantially similar" by "Little Nicky," we are unable to find any similarity between comparing the two works. Wickham, 739 F.2d at 1097. the works other than at perhaps the most superficial level. Substantial similarity exists where "the accused work is so Casting aside the many stock themes, scenes a faire, and raw similar to the plaintiff's work that an ordinary reasonable ideas cited by Stromback, we are left with two works that are person would conclude that the defendant unlawfully completely dissimilar in both their overall look and feel and appropriated the plaintiff's protectible expression by taking in their constituent expressive elements. material of substance and value." Country Kids 'N City Slicks, Inc. v. Sheen, 77 F.3d 1280, 1288 (10th Cir. 1996) The respective themes, plots, moods, and settings of the (internal quotation marks and citation omitted). In Murray works are dissimilar. "The Keeper" is a dark, disturbing, and Hill we wrote: humorless story about real people. Its theme is difficult to discern, but it appears to be that power and success in life can "A story has a linear dimension: it begins, continues, and be attained through rhyming. The story takes place in ends. If a defendant copies substantial portions of a California, and much of it occurs in the basement of the plaintiff's sequence of events, he does not escape national paper where Ted works. While at the national paper infringement by adding original episodes somewhere Ted is attracted to a woman, Sue, who spurns him because he along the line." "The misappropriation of even a small is "weird." Ted dislikes the corrupt Governor and at some portion of a copyrighted work may constitute an point figures out that the Governor was connected with a cult infringement under certain circumstances." "Even if a of devil worshipers and had something to do with a murder. copied portion be relatively small in proportion to the In an effort to bring down the Governor, Ted sends a series of entire work, if qualitatively important, the finder of fact rhyming clues to the national paper that ultimately reveal the may properly find substantial similarity." "No plagiarist Governor's connection to the murder.6 Ted refers to the can excuse the wrong by showing how much of his work Governor as "evil" and "the antichrist" several times he did not pirate." throughout the story, but this is only his use of a metaphor, as there is never any suggestion that Governor John actually is 361 F.3d at 320 (citations omitted). In a case such as this, it the devil. The Governor eventually figures out that Ted is the is appropriate to examine the theme, characters, plot, "rhyming dude" and sends henchmen to kill Ted. Ted betrays sequence, pace, and setting for similarities. Williams v. his friend, Scott, by leading a henchman to believe that Scott Crichton, 84 F.3d 581, 588 (2d Cir. 1996). "However, 'random similarities scattered throughout the works' may be discounted." Murray Hill Publ'ns, Inc., 361 F.3d at 320 6 The district court and the parties state that the Governor was (quoting Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th respo nsible for the murder, but the text of "The K eeper" suggests that the Cir. 1984)). In the end, the question is whether, based upon Governor's father committed the murder ("Well the big d eal is that a his "net impression" of the works' expressive elements, the prim e suspect in the ca se was the secretary of the state. . . . W ell, the secretary of states [sic] kid is now the governor. The one that will be the next president."). (J.A. at 334-35.) Nos. 02-2387/2388 Stromback v. New 19 20 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

is Ted. After the henchman shoots Scott, Ted reveals to Scott The list of similarities cited by Stromback is extensive, but that he used Scott as his "ladder." In the end, Ted becomes nonetheless insufficient to render the two works substantially Governor and uses his power to exact revenge on Sue by similar. Some of the alleged similarities do not exist, others raping her. are overstated, and, to the extent there are similarities, they are simply too general or tenuous to meet the legal standard In contrast, "Little Nicky" is a comedy about the devil and for similarity. By way of example, Stromback says that Ted his three sons. The predominant theme in "Little Nicky" is is shown as a riddler and a punner and claims that the same that good should and will prevail over evil. The story takes "wordplay" occurs in Nicky's character development, but this place in Hell, New York City, and Heaven. Little Nicky, the is simply not true. Unlike Ted, Nicky does not speak in youngest of the three sons, is sent to Earth to bring back his rhymes or use wordplay. Likewise, Stromback claims that two brothers, Casius and Adrian, who have escaped from Hell Ted and Nicky both assume the same burden – saving the as part of their plan to assume control. Nicky must bring his world and souls. But, a fair read of "The Keeper" shows that brothers back to Hell in order to restore the balance of good Ted's true concern is his own self-interest. While there are and evil and to save his father, Satan. On Earth, Nicky meets some similarities – for example, references to Hell and the and falls in love with Valerie. After dying and returning to devil and interracial families – Stromback's claim fails Hell several times, Nicky ends up in Heaven and discovers because the similar details are trivial or scattered details. See that his mother is an angel. Just as Adrian is about to prevail Williams, 84 F.3d at 590-91. "Where as here, the slight and claim all of the souls of New York City, Nicky returns to similarities are not thematically related, the whole is no Earth and, using the magic sphere his mother gave him, greater than the sum of the parts." Murray Hill Publ'ns, Inc., bottles Adrian in the magic flask. After Nicky returns his 361 F.3d at 325. Thus, the district court was correct in brothers to Hell, Satan sends Nicky back to Earth, and Nicky concluding that a reasonable person could not conclude that and Valerie have a son and live happily ever after. NLC copied protected expression from "The Keeper." The main characters, Ted and Nicky, are markedly In spite of the absence of similar protectible elements in different. Ted is portrayed as a slick and scheming character both works, Stromback contends that NLC's admission of whose most prominent trait is that he speaks in rhymes, often access precludes a finding of no substantial similarity as a as a means to deceive and lure women. For example, in one matter of law. This argument is easily rejected, because scene, Ted tells a waitress that he would like her "ass," but without substantial similarity, there can be no inference of when she responds in apparent disgust he says "I would like copying, and thus, no infringement. In Wickham v. Knoxville your bass, bass ale." Ted reveals his evil side at the end of the International Energy Exposition, Inc., 739 F.2d 1094 (6th Cir. story by betraying his friend and raping the woman who 1984), we held that because there was no substantial rejected him. In contrast, as a son of the devil, Nicky is similarity, access was irrelevant: "No amount of proof of unexpectedly portrayed as sweet, good-hearted, and naive. access will suffice to show copying if there are no Nicky succeeds in the end by using his inner good and similarities." Id. at 1097; accord Arnstein v. Porter, 154 F.2d ultimately saves the world by restoring the balance of good 464, 469 (2d Cir.1946) ("Of course, if there are no and evil. similarities, no amount of evidence of access will suffice to prove copying."). Nos. 02-2387/2388 Stromback v. New 21 22 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

Finally, Stromback contends that the district court erred in Stromback only alleged that the movie "Little Nicky" granting summary judgment to NLC because it should have infringed "The Keeper" poem and screenplay. allowed discovery on the underlying and prior versions of the screenplay in order to permit Stromback to fully develop his C. Lanham Act Claim claim. Stromback points out that he alleged not only that the movie "Little Nicky" infringed his copyright in "The Keeper," Stromback also contends that the district court erred in but also that NLC substantially copied and prepared versions granting summary judgment on his claim for reverse passing of "The Keeper." Stromback contends that discovery was off under Section 43 of the Lanham Act. Where a plaintiff's necessary to this portion of his claim and was relevant to Lanham Act claim parallels his copyright infringement claim, address the question of how the movie "Little Nicky" was a finding of no substantial similarity on the copyright claim prepared in light of NLC's election not to rely upon precludes the Lanham Act claim. Mihalek Corp. v. Michigan, independent creation as a defense. The district court rejected 814 F.2d 290, 296 (6th Cir. 1987); see also Litchfield v. Stromback's request because only the movie was published to Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984) (stating that the public and because Stromback alleged in his amended "without substantial similarity there can be no claim for complaint only that the movie was an infringing work. We reverse passing off" under the Lanham Act). Stromback think that this was the correct result. In deciding makes no attempt to distinguish his Lanham Act claim from infringement claims, courts have held that only the version of his copyright infringement claim or to explain how there the alleged infringing work presented to the public should be could be a likelihood of confusion when the two works are considered. See Davis v. United Artists, Inc., 547 F. Supp. not substantially similar. Therefore, summary judgment was 722, 724 n.9 (S.D.N.Y. 1982) ("Since the ultimate test of proper. infringement must be the film as produced and broadcast, we do not consider the preliminary scripts."). "Courts have D. State Law Claims routinely rejected requests to consider earlier drafts of the screenplay. Consideration of earlier versions of the The district court concluded that NLC was entitled to screenplay is too unreliable in determining substantial summary judgment on all of Stromback's state law claims on similarity." Walker v. Time Life Films, Inc., 615 F. Supp. the ground that they were subject to copyright preemption. 430, 435 (S.D.N.Y. 1985); see also Madrid v. Chronicle On appeal, Stromback takes issue only with the district court's Books, 209 F. Supp. 2d 1227, 1234 (D. Wyo. 2002) (quoting dismissal of his claims for commercial misappropriation, Walker and refusing to grant the plaintiff's request for misappropriation of trade secrets, and interference with discovery on the development of the defendant's movie prospective economic advantage claims. because such discovery would be "pointless"). As the Madrid Section 301 of the Copyright Act provides that: court noted, the "intermediate copying" concept has only been recognized in a very limited application to cases involving On and after January 1, 1978, all legal or equitable computer programs – because of the complex nature of the rights that are equivalent to any of the exclusive rights subject. Id. at 1236. Because this is not such a case, there is within the general scope of copyright as defined by no need to apply the concept. Furthermore, in spite of section 106 in works of authorship that are fixed in a Stromback's assertion to the contrary, the district court's tangible medium of expression and come within the assessment of the amended complaint was accurate because Nos. 02-2387/2388 Stromback v. New 23 24 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

subject matter of copyright . . . are governed exclusively preemption on this basis because it relates to "the time, effort, by this title. Thereafter, no person is entitled to any such and money that [Stromback] expended" as well as NLC's right or equivalent right in any such work under the unauthorized "uses" of Stromback's efforts. (Appellant's Br. common law or statutes of any State. at 55-56.) This argument ignores the principle cited above, that the subject matter of copyright is broader than its 17 U.S.C. § 310(a). A state law claim will be preempted protections. Thus, Stromback's citation to Feist Publications, under Section 301 where two requirements are met. First, the Inc. v. Rural Telephone Service Co., 499 U.S. 338, 111 S. Ct. work must come within the scope of the "subject matter of 1282 (1991), for the proposition that there is no copyright copyright" as set forth in Sections 102 and 103 of the protection for "sweat of the brow" efforts is not germane to Copyright Act. Wrench LLC v. Taco Bell Corp., 256 F.3d the subject matter inquiry. Moreover, even assuming that 446, 453 (6th Cir. 2001). Second, the rights granted under Stromback's time, effort, and money constitute a separate state law must be equivalent to any of the exclusive rights element of his claim, it would still be within the subject within the scope of federal copyright protection. Id. These matter of copyright because the claim is based upon NLC's requirements are often referred to as the "subject matter unauthorized use of "The Keeper" poem and screenplay. Cf. requirement" and the "general scope" or "equivalency" Nat'l Basketball Ass'n, 105 F.3d at 848 ("We hold that where requirement. Id. (citing Nat'l Basketball Ass'n v. Motorola, the challenged copying relates in part to the copyrighted Inc., 105 F.3d 841, 848 (2d Cir. 1997)). broadcasts of the games, the subject matter requirement is met as to both the broadcasts and games."). Moreover, 1. Subject Matter Requirement Stromback's argument that Section 106 of the Copyright Act does not grant a copyright owner the exclusive right to "use" The subject matter requirement of Section 301 is satisfied a work is sophistry. See Alcatel USA, Inc. v. DGI Techs., if a work fits within the general subject matter of Sections Inc., 166 F.3d 772, 787 (5th Cir. 1999) ("Use of a copyrighted 102 and 103 of the Copyright Act, regardless of whether it work by one who does not own the copyright constitutes qualifies for copyright protection. Baltimore Orioles, Inc. v. infringement under federal law, provided the use falls within Major League Baseball Players Ass'n, 805 F.2d 663, 676 (7th the scope of a copyright owner's exclusive rights.") (footnote Cir. 1986) (quoting H.R. Rep. No. 94-1476, at 131, reprinted omitted). in 1976 U.S.C.C.A.N. 5659, 5747). In Wrench, this court joined several other circuits in holding that for purposes of 2. Equivalency Requirement preemption, the scope of the Copyright Act's subject matter is broader than the scope of its protection. Wrench, 256 F.3d Courts analyze equivalency by applying "a functional test" at 454-55. Stromback's claims meet the subject matter to determine whether the state law right at issue is equivalent requirement because "The Keeper" poem and screenplay fall to any of the exclusive rights under Section 106 of the squarely within the range of materials protected by the Copyright Act. Data Gen. Corp. v. Grumman Sys. Support Copyright Act; that is, they are both original literary works Corp., 36 F.3d 1147, 1164 (1st Cir. 1994). In Wrench, we "fixed in [a] tangible medium of expression." 17 U.S.C. stated: § 102(a). Stromback does not dispute that the poem and screenplay meet the subject matter requirement, but he does Equivalency exists if the right defined by state law argue that his commercial misappropriation claim avoids may be abridged by an act which in and of itself would Nos. 02-2387/2388 Stromback v. New 25 26 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

infringe one of the exclusive rights. Conversely, if an under the Copyright Act); Artie Fields Prods., Inc. v. Channel extra element is required instead of or in addition to the 7 of Detroit, Inc., No. 94-CV-70730-DT, 1994 WL 559331, acts of reproduction, performance, distribution or display at *2-3 (E.D. Mich. June 10, 1994) (holding that the plaintiff's in order to constitute a state-created cause of action, there misappropriation and unfair competition claims grounded is no preemption, provided that the extra element solely in the copying of the plaintiff's protected expression changes the nature of the action so that it is qualitatively were preempted); 1 Nimmer § 1.01[B][1][f][iii] ("Except for different from a copyright infringement claim. a few stray rulings, legions of cases . . . have held preempted claims for misappropriation") (citations omitted). Of course, 256 F.3d at 456 (citation omitted). See also Summit Mach. a misappropriation claim will survive preemption if it alleges Tool Mfg. Corp. v. Victor CNC Sys., Inc., 7 F.3d 1434, 1440 an extra element, such as a confidential or fiduciary (9th Cir. 1993). The existence of an extra element precludes relationship. Computer Assocs. Int'l, Inc. v. Altai, Inc., 982 preemption only where the element changes the nature, rather F.2d 693, 717 (2d Cir. 1992). However, Stromback's than the scope, of the action. Data Gen., 36 F.3d at 1164-65. assertion that his claim is based upon the time, effort, and money that he expended in developing the screenplay is not a. Commercial Misappropriation an extra element that saves his claim from preemption. See Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, Stromback alleges in his commercial misappropriation 976-77 (9th Cir. 1987) (finding the plaintiff's claim that Stromback "expended significant time, effort, and misappropriation claim preempted because the "[e]ffort money" to create "The Keeper" screenplay with "the expended to create a Tentative Map and supporting expectation that he would reap the benefits of the production documents is effort expended to create tangible works of of the screenplay into a film for commercial sale" and that authorship" and "[a]s such, this effort is within the scope of NLC misappropriated the poem and screenplay, including its copyright protection"); Mayer v. Josiah Wedgwood & Sons, characters, scenes and events and will reap the benefits that Ltd., 601 F. Supp. 1523, 1535 (S.D.N.Y. 1985) (rejecting as Stromback was expecting. (1st Am. Compl. ¶¶ 48-49, J.A. at preempted the plaintiff's unfair competition/misappropriation 242.) The essence of this claim is that NLC copied portions claim alleging misappropriation of the plaintiff's time, effort, of "The Keeper" poem and screenplay. Courts faced with and talent). Therefore, this claim is preempted. similar misappropriation claims have held them to be preempted by the Copyright Act because they allege an act b. Misappropriation of Trade Secrets that infringes upon one of the exclusive rights set forth in Section 106. See, e.g., Daboub v. Gibbons, 42 F.3d 285, 289 Count VI of Stromback's first amended complaint alleged (5th Cir. 1995) (concluding that the plaintiffs' claims, a claim for misappropriation of trade secrets under the including misappropriation, were preempted because they Michigan Uniform Trade Secrets Act ("MUTSA"), M.C.L. merely alleged wrongful copying, distribution and §§ 445.1901-.1910, and under Michigan and California performance of lyrics without alleging an extra element rendering the claim different from a copyright infringement claim); Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir. 1985) (finding "no distinction" between the state law right asserted in the misappropriation claim and the exclusive rights granted Nos. 02-2387/2388 Stromback v. New 27 28 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

common law.7 Under Michigan law, the elements of a International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992), common law claim for misappropriation of trade secrets are: the Second Circuit stated: (1) the existence of a trade secret; (2) the defendant's acquisition of the trade secret in confidence; and (3) the [M]any state law rights that can arise in connection with defendant's unauthorized use of it. Aerospace Am., Inc. v. instances of copyright infringement satisfy the extra Abatement Techs., Inc., 738 F. Supp. 1061, 1069 (E.D. Mich. element test, and thus are not preempted by section 301. 1990) (citing Kearns v. Ford Motor Co., 203 U.S.P.Q. 884, These include unfair competition claims based upon 888 (E.D. Mich. 1978)). MUTSA displaces common law breaches of confidential relationships, breaches of trade secret misappropriation claims arising after October 1, fiduciary duties and trade secrets. 1998 – the effective date of MUTSA. M.C.L. § 445.1910. Stromback alleged in his complaint that "Defendants had a .... duty not to disclose or exploit confidential information acquired from [Stromback]"; that "Defendants were aware Trade secret claims often are grounded upon a that the information obtained by [sic] Stromback was defendant's breach of a duty of trust or confidence to the confidential information and/or trade secrets"; that plaintiff through improper disclosure of confidential "Defendants disclosed and exploited the confidential material. The defendant's breach of duty is the gravamen information they received from [Stromback], without of such trade secret claims, and supplies the "extra Stromback's permission"; and that Stromback has been element" that qualitatively distinguishes such trade secret damaged as a result of "[Defendants'] breaches of their duty causes of action from claims for copyright infringement of confidentiality." (1st Am. Compl. ¶¶ 64-67, J.A. at 246.) that are based solely upon copying.

In concluding that the misappropriation of trade secrets Id. at 717 (citations omitted). See also Dun & Bradstreet claim was preempted, the district court lumped it together Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, with Stromback's commercial misappropriation claim, stating 218 (3d Cir. 2002) ("We agree with Geac that if their that it was "substantively no different than [the] commercial misappropriation of trade secrets claim was based on such misappropriation claim." In doing so, however, the district breach of duty of trust and confidentiality, it would survive court failed to recognize that a considerable number of cases preemption in this case."); Ez-Tixz, Inc. v. Hit-Tix, Inc., 919 have held that misappropriation of trade secrets claims are not F. Supp. 728, 737-38 (S.D.N.Y. 1996) (holding that because preempted because they require proof of a confidential "plaintiff's claim for trade secret misappropriation require[d] relationship, which provides the extra element required to proof of a breach of confidence, it [was] not preempted by survive preemption. For example, in Computer Associates federal law"); 1 Nimmer § 1.01[B][1][h] ("Actions for disclosure and exploitation of trade secrets require a status of secrecy, not required for copyright, and hence, are not preempted.") (footnotes omitted). Several courts have held 7 that claims brought under state trade secret statutes modeled The district court did not decide whether Michigan or California law on the Uniform Trade Secrets Act, such as MUTSA, survive applies to this claim , and it appears that the parties did not raise the issue preemption because the required proof of the existence and in their briefing. We find it unnecessary to address the choice of law issue breach of a confidential relationship provides the extra at this point. Nos. 02-2387/2388 Stromback v. New 29 30 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

element necessary to survive preemption. See Data Gen. analysis.8 In Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1165 655 (4th Cir. 1993), the Fourth Circuit stated that in (1st Cir. 1994) (holding that a claim under Massachusetts determining equivalency, a court should compare "the trade secret law was not preempted "because participation in elements of the causes of action . . ., not the facts pled to the breach of a duty of confidentiality – an element that forms prove them." Id. at 659. See also Gates Rubber Co., 9 F.3d no part of a copyright infringement claim – represents unfair at 847 (examining elements of the state cause of action for competitive conduct qualitatively different from mere misappropriation of trade secrets to determine whether the unauthorized copying"); Trandes Corp. v. Guy F. Atkinson extra element requirement was met); Harolds Stores, Inc. v. Co., 996 F.2d 655, 660 (4th Cir. 1993) (holding that a claim Dillard Dep't Stores, Inc., 82 F.3d 1533, 1543 (10th Cir. under the Maryland Uniform Trade Secrets Act was not 1996) (following Trandes Corp.). We believe that Trandes preempted because it "require[d] proof of a breach of trust or Corp. provides an accurate statement of the law generally, confidence"); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, where the state law claim itself furnishes the extra element 1090 n.13 (9th Cir. 1989) (noting that a claim under the needed to avoid equivalency. In this case, for example, the California Uniform Trade Secrets Act would not involve a district court could have determined the preemption issue legal or equitable right equivalent to an exclusive right of a solely by examining the elements for a trade secrets copyright owner under the Copyright Act); Gates Rubber Co. misappropriation claim under Michigan law. Because a v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847-48 (10th Cir. plaintiff alleging such a claim must prove the existence and 1993) ("Because Gates' claim for trade secret breach of a confidential relationship, the claim itself is not misappropriation under the Colorado Uniform Trade Secrets preempted. Whether the plaintiff has actually alleged the Act requires proof of a breach of trust or confidence – proof proper elements of the claim goes to the question of whether that is not required under the Copyright Act – Gates' state law the claim could survive a Rule 12(b)(6) motion to dismiss, not claims are not preempted by federal law."); Bateman v. whether the claim is preempted. See Firoozye v. Earthlink Mnemonics, Inc., 79 F.3d 1532, 1549 (11th Cir. 1996) Network, 153 F. Supp. 2d 1115, 1131 (N.D. Cal. 2001) ("The (expressing "no doubt that the Florida trade secret statute at defendants' contention that the plaintiff has failed to allege a issue satisfies the 'extra element' test generally employed by confidential relationship and their citation to Design Art courts in performing copyright preemption analysis"). address the merits of the plaintiff's trade secret claim, not Because proof of a confidential relationship is a necessary whether that claim is preempted by the Copyright Act."). element in a trade secret misappropriation claim under both the common law and uniform trade secrets laws such as MUTSA, we hold that Stromback's trade secrets 8 NLC contends that because Stromback did not argue to the district misappropriation claim is not preempted by Section 301; court that there was a fiduciary relationship with NLC, the argument proof of a confidential relationship and its breach provide an should be preclud ed on app eal. W hile we will generally decline to extra element. consider on appeal issues not considered by the district court, we do recognize an exception where the issue presents only a question of law. In noting that Stromback did not argue that there was an United Food & C om mercial W orkers Un ion, Local 1099 v. Sou thwest extra element, such as a fiduciary relationship, the district Oh io Reg 'l Transit Auth., 163 F.3d 34 1, 360 n.9 (6th Cir. 1998) (quoting City Mg m't Corp. v. U.S. Chem. Co., 43 F.3d 244 , 255 (6th Cir. 1994)). court failed to undertake the proper inquiry in an equivalency Here we address the issue of a confidential relationship as part of our legal analysis. Nos. 02-2387/2388 Stromback v. New 31 32 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

Nonetheless, a court may be required to review the facts as contract allegations to determine whether the promise was a pled by the plaintiff in order to determine whether the acts "promise to pay for the use of the work," which would not giving rise to the state law claim are merely acts of copyright have been preempted, or merely "a promise to refrain from infringement. See Sturdza, 281 F.3d at 1304 ("To determine reproducing, performing, distributing or displaying the work," whether a state law claim is qualitatively different from a which would have been preempted. Wrench, 256 F.3d at 457. copyright claim – that is, whether the state claim has an 'extra Similarly, in Murray Hill Publications, Inc. v. ABC element' – courts generally examine both the elements of the Communications, Inc., 264 F.3d 622 (6th Cir. 2001), we set state law cause of action and the way the plaintiff has actually forth the law in Michigan regarding conversion and then pled that cause of action."). For example, a conversion claim determined from the plaintiffs' allegations that the claim was will usually survive preemption because the tort relates to the preempted because it met the equivalency requirement. Id. at unauthorized exercise of dominion and control, or 636-37. interference with, another's personal property. See, e.g., Carson v. Dynegy, Inc., 344 F.3d 446, 456-57 (5th Cir. 2003) Although the district court incorrectly determined that the (holding that conversion claim under Texas law survived misappropriation of trade secrets claim was preempted, this preemption); United States ex rel. Berge v. Bd. of Trustees of panel may affirm if the decision was correct for any reason, the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997) ("It is including one the district court did not consider. United hornbook law that a state law action for conversion will not States Postal Serv. v. Nat'l Ass'n of Letter Carriers, 330 F.3d be preempted if the plaintiff can prove the extra element that 747, 750 (6th Cir. 2003). We conclude that dismissal was the defendant unlawfully retained the physical object proper because, as a matter of law, "The Keeper" poem and embodying its work.") (internal quotations and citations screenplay were not trade secrets and, even if they were, there omitted). Where the conversion claim involves intangible was no misappropriation. In order to constitute a trade secret property, a court should examine the plaintiff's allegations to under MUTSA, information alleged to be a trade secret must determine whether the state law right is equivalent to one of "[d]erive independent economic value, actual or potential, the exclusive rights under Section 106. See Daboub, 42 F.3d from not being generally known to, and not being readily at 289-90 (holding that the conversion claim was preempted ascertainable by proper means by, other persons who can where the plaintiffs alleged that the defendants improperly obtain economic value from its disclosure or use." M.C.L. copied, distributed, and performed their song); Berge, 104 § 445.1902(d)(i). Thus, the essence of a trade secret is that it F.3d at 1463 (holding conversion claim preempted because derives its value from secrecy. Here, Stromback could not "what is crucial is that Berge makes no claim that appellants possibly argue that his poem and screenplay had "independent converted any tangible objects embodying her intellectual economic value" because he kept them secret. Those works property"). Likewise, a promise in a breach of contract claim would have "independent economic value" only if they were may suffice as an extra element, but this determination must exploited publicly through broad dissemination. Furthermore, be based upon a review of the plaintiff's allegations. Higher even if Stromback's poem and screenplay had some Gear Group, Inc. v. Rockenbach Chevrolet Sales, Inc., 223 F. independent economic value from being held in secrecy, Supp. 2d 953, 958 (N.D. Ill. 2002). We followed this Stromback could not prove misappropriation. As set forth approach in Wrench. Although we examined Michigan law above, "The Keeper" poem and screenplay and "Little Nicky" regarding contracts implied in fact and contracts implied in are not at all similar. The only similarities arise from law, it was necessary to also examine the plaintiffs' breach of common and well-known themes, plots, and character traits Nos. 02-2387/2388 Stromback v. New 33 34 Stromback v. New Nos. 02-2387/2388 Line Cinema, et al. Line Cinema, et al.

that "are readily ascertainable by other means," id., and rights protected by copyright"); Titan Sports, Inc. v. Turner therefore cannot constitute trade secrets. Because we have Broadcasting Sys., Inc., 981 F. Supp. 65, 74 (D. Conn. 1997) concluded that the two works are not substantially similar, no ("The right that Plaintiff's contracts with Hall and Nash seeks reasonable juror could conclude that NLC misappropriated to protect is Plaintiff's exclusive ownership right in its any trade secrets from Stromback's works. copyrighted material – precisely what the Copyright Act seeks to protect."); Aqua Bay Concepts, Inc. v. Grosse Point c. Interference with Prospective Economic Advantage Bd. of Realtors, No. 91-CV-74819, 1992 WL 350275, at *4 (E.D. Mich. May 7, 1992) ("There is no indication that the Stromback's final state law claim is a claim for interference state allegation of contractual interference is 'qualitatively with prospective economic advantage. The elements of the different' from the copyright infringement claim."). claim are: (1) the existence of a valid business relationship or According to Professor Nimmer, expectancy; (2) knowledge of the relationship or expectancy by the defendant; (3) intentional interference by the defendant Insofar as unauthorized reproduction, distribution, which induces or causes a breach or termination of the performance or display causes the plaintiff to lose the relationship or expectancy; and (4) damage to the plaintiff. benefits that would flow from an actual or prospective BPS Clinical Labs. v. Blue Cross & Blue Shield of Mich., 217 contract whereby plaintiff would authorize any such acts, Mich. App. 687, 698, 552 N.W.2d 919, 925 (1996) (per the rights created by the tort of contract interference do curiam). Stromback's allegations in support of this claim are not appear to differ qualitatively from rights under that he "had a legitimate expectation of a future economic copyright; copyright also contemplates loss of actual or benefit from the development of his poetry and screenplay"; prospective contract benefits by reason of such that NLC "knew that the use of [Stromback's] poem and unauthorized acts. Pre-emption in this context would, screenplay would interfere with [his] reputation and [its] then, appear to be justified. The fact that the tort, unlike development . . . within the film industry"; and that NLC's copyright infringement, requires awareness of the "actions in misappropriating the poem and screenplay conflicting contract and an intentional interference with including the characters, character interplay, scenes and it merely means that the state-created right is narrower events . . . and passing them off as [its] own in the production than its copyright counterpart, not that it is qualitatively of 'Little Nicky' . . . were made with the intent that different so as to preclude pre-emption. [Stromback's] expected relationships would be disrupted." (1st Am. Compl. ¶¶ 77-79, J.A. at 248.) 1 Nimmer § 1.01[B][1][a] (footnotes omitted). See also Harper & Row Publishers, Inc. v. Nation Enters., 723 F.2d Generally, tortious interference claims (with contract or 195, 201 (2d Cir. 1983), rev'd on other grounds, 471 U.S. prospective economic advantage) are held to be preempted 539, 105 S. Ct. 2218 (1985) (finding the tortious interference because the rights asserted in such claims are not qualitatively claim preempted because unauthorized publication was the different from the rights protected by copyright. See, e.g., basis for the violation and the elements of awareness and Idema v. Dreamworks, Inc., 162 F. Supp. 2d 1129, 1193 intentional interference pled in the tortious interference claim (C.D. Cal. 2001) (holding that the plaintiff's claim for did not render the claim different from a copyright claim). negligent interference with prospective economic advantage did "not protect any right 'qualitatively different' from those Nos. 02-2387/2388 Stromback v. New 35 Line Cinema, et al.

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