Aargh! Whether substantial similarity exists between two works determines every copyright infringement case, but new confusion has arisen in the Ninth Circuit over whether expert testimony is required before dismissal because works are not substantially similar. For over 75 years district courts have routinely granted motions to dismiss for lack of substantial similarity without requiring expert testimony[i] and the Ninth Circuit has affirmed.[ii]

 However, beginning with a 2018 concurrence in Astor-White v. Strong which raised concerns over the pattern of dismissals before discovery,[iii] the Ninth Circuit has increasingly reversed lower court decisions that found no substantial similarity at the motion to dismiss stage. Last year, two unpublished copyright infringement decisions — based on the films The Pirates of the Caribbean: The Curse of the Black Pearl (2003) and Inside Out (2011) — reached opposite conclusions about requiring expert testimony, muddling this previously uncontroversial legal area.

This is an issue of special importance to creators in our “Hollywood Circuit”[iv] who need to know when copyright infringement cases involving their works can be dismissed before discovery. All creative works are inspired by those that came before them,[v] but there is a certain point past which inspiration becomes actual copying and infringement. It is important that frivolous cases before that point are dismissed as early as possible so creators are not crippled by costly discovery in lawsuits and discouraged from creating new content. In most cases, judges are able to determine that line without expert assistance. When expert testimony may be required, however, is currently unclear but needs to be plainly drawn. Lack of clarity about when expert testimony is necessary disservices not only copyright defendants but also copyright plaintiffs, subject to inconsistent decisions, who could have viable claims.

Until the Ninth Circuit resolves this inconsistency with its prior jurisprudence, we must rely on a comparative examination of these two decisions to understand which copyright cases may need expert testimony before dismissal. First and foremost, the cases rely on differing standards of requiring expert testimony, one of which is more deferential to a complaint’s allegations of substantial similarity. It also appears that older or more influential works are more likely to require expert testimony to determine whether their ideas were generic and thus unprotectable when the works were released. Going forward, these and other learned lessons should dictate parties’ litigation strategies pre-discovery and on appeal.

the curse of the black pearl 

In Alfred v. Walt Disney Company, the Ninth Circuit considered whether Pirates of the Caribbean: The Curse of the Black Pearl was substantially similar to the plaintiffs’ screenplay entitled Pirates of the Caribbean — renamed from Pirates of the Spanish Main to appeal to Disney — which the plaintiffs had previously submitted to Disney talent executives.[vi] In the plaintiffs’ screenplay, alcoholic pirate Davey Jones leads a group of orphans in battles and a treasure hunt against Captain Jack Nefarious, Jones’s former first mate, and Nefarious’ crew, whom the orphans call “undead.”

Meanwhile, The Curse of the Black Pearl involves another alcoholic pirate, Captain Jack Sparrow, who attempts to recover his old ship, the Black Pearl, from Captain Barbossa and its crew, who are cursed as undead. After Jack is arrested and Barbossa kidnaps the Governor’s daughter, Elizabeth Swann, blacksmith apprentice Will Turner makes a deal with Jack to help recover the Black Pearl and save Elizabeth, who Will loves. 

In analyzing similarities between the works, the district court filtered out the unprotected elements of the plaintiffs’ screenplay and compared the protectable elements of both works in great detail under the extrinsic test, which for literary works requires assessment of similarities between protected elements in plot, theme, dialogue, mood, setting, pace, characters and sequence of events.[vii] After eight pages of analysis, the court concluded that no substantial similarity existed.[viii]

But in three paragraphs the Ninth Circuit determined that the lower court had erred in its extrinsic test analysis, concluding that “many of the elements the two works share in common are unprotected generic, pirate-movie tropes.”[ix] The court explained that it was “difficult to know whether such elements are indeed protectible material” at the complaint stage, without additional evidence such as expert testimony to “aid in determining whether the similarities the plaintiffs identify are qualitatively significant.”[x] The panel also found expert testimony “particularly useful” here because the works were almost 20 years old and The Curse of the Black Pearl may have shaped pirate-movie tropes and not the other way around.[xi]

Additionally, the Ninth Circuit found the district court’s analysis faulty for another reason—its failure to consider the alternative “selection and arrangement” test for substantial similarity.[xii] Although the extrinsic test remains the hallmark test, there is law supporting substantial similarity where the original selection and arrangement of unprotectable elements arises to the level of protected expression.[xiii]

Here, the Ninth Circuit reviewed certain similarities between the works — that both begin with a prologue taking place 10 years before the main story; involve treasure stories on islands and caves; feature past stories of betrayal by a former first mate; and depict skeleton crews and a young, rogue pirate.[xiv] It found the selection and arrangement of those elements, protected or not, was “more than de minimis” and therefore survived a motion to dismiss.[xv]

inside out

The Ninth Circuit reached an entirely different conclusion on substantial similarity — consistent with its earlier decisions — in Masterson v. Walt Disney Company.[xvi] In this case, the plaintiff alleged that Inside Out infringed her poetry book, What’s On the Other Side of the Rainbow? (A Book of Feelings).[xvii]

The plaintiff’s book is a collection of poems about different feelings that totals only 40 pages, including pictures. It begins with a cloud-like character named Mr. Positively who introduces four children to “anthropomorphic doors” that correspond to different feelings.[xviii] Only Mr. Positively has dialogue; the doors and children do not speak.[xix] 

Inside Out depicts a story of anthropomorphized emotions who live inside a young girl named Riley’s mind. Riley has recently moved to San Francisco, causing a disruption in her emotions, and leading to “Joy” and “Sadness” being kicked out of Riley’s inner “Headquarters,” or emotional command center.[xx] Joy and Sadness must subsequently find their way back to Headquarters so they can reinstate Riley’s proper emotional balance.[xxi]

As for expert testimony, the Ninth Circuit determined that it was not required in this case. It cited the Circuit’s long history of affirming dismissals based on substantial similarity before discovery in unpublished opinions as well as in published cases in other circuits.[xxiv] Then, it clarified that expert testimony is not required if “[n]othing disclosed during discovery could alter the fact that the allegedly infringing works are as a matter of law not substantially similar.”[xxv] The panel further explained that the issue on a motion to dismiss is whether the complaint states a plausible claim, which requires the court to draw on its “judicial experience and common sense.”[xxvi] Thus, it concluded that while a judge may sometimes find substantial similarity plausible and that expert testimony would be helpful, the court may rely on its own judicial experience and common sense to hold that substantial similarity is simply not plausible.[xxvii] Masterson was the latter case.

case comparisons

At first glance, the similarities between the screenplay and The Curse of the Black Pearl in Alfred are not much more significant than those between the poetry book and Inside Out in Masterson, yet the Ninth Circuit found that the former case required expert testimony before dismissal. Examining the decisions closely, however, reveals valuable insights into why the Ninth Circuit might have decided Alfred differently.

First, the Ninth Circuit had an “easy out” in Alfred because the district court never considered the selection and arrangement test. Although the Ninth Circuit’s review was de novo, the absence of any lower court analysis provided the court a simple way to send the case back without having to painstakingly conduct the test itself — hence the brief selection and arrangement portion of the opinion.

On the other hand, the lower court in Masterson had conducted the selection and arrangement test. Accordingly, the Ninth Circuit would need to find error in that analysis which is more complicated than reversing for failure to conduct the test at all. The panel’s quick rubber stamp of the lower court’s analysis without much detail is likely a result of that difficulty. Indeed, it is extremely rare for the Ninth Circuit to find substantial similarity solely on the selection and arrangement test. In fact, Masterson was the first case where the Ninth Circuit held that a plaintiff plausibly alleged selection and arrangement for literary works since the test was established in Metcalf v. Bocho nearly 20 years ago.[xxviii]

 Thus, while many defendants argue that the selection and arrangement test is no longer good law, it is clear that the Ninth Circuit still considers it a necessary inquiry. Accordingly, defendants facing copyright infringement lawsuits should still argue that plaintiffs’ claims fail to meet this test because failure of the district court to consider the issue may prove fatal. Based on Alfred and Masterson, though, defendants should find comfort that as long as the selection and arrangement test is conducted in their favor, the Ninth Circuit is extremely unlikely to reverse that decision. Plaintiffs, however, are likely to face the same difficulties establishing substantial similarity under selection and arrangement at the district court and appellate level.

Second, the nature of the works might have resulted in opposite decisions. The plaintiff’s work in Masterson was a short book without dialogue and was practically a picture book. Accordingly, there was no dialogue for the court to compare under the extrinsic test. Other aspects such as plot and characters were also low on substance due to the type of work. It is much easier for a judge, or anyone for that matter, to filter and compare a work that is short and uncomplicated. The court never considered the plaintiff’s script, which was more developed, because she failed to allege access, which may have doomed her case.[xxix]

 The situation in Masterson is a far cry from the fully developed screenplay in Alfred, which involved a significantly more complex extrinsic analysis. Thus, the Ninth Circuit may lean towards requiring expert testimony where the subject works are more fully developed and therefore necessitate in-depth comparisons. The Ninth Circuit’s dismissal of Astor-White last year after remand, where the plaintiff claimed infringement of his one-page treatment, provides further support for the conclusion that plaintiffs seeking expert testimony for shorter works face an uphill battle.[xxx]

Naturally, examining two works at a high level of abstraction will yield more similarities than not. Upon closer inspection of the works in Alfred, the Ninth Circuit may have seen that the works were in fact not substantially similar at all. Take into account what the court did not mention about the film — that there is an explicit romance between Will and Elizabeth; the pirates in the film are actually undead; and there is a curse subplot — the brief similarities the court mentioned may be de minimis after all. Thus, a defendant may have the greatest chance of prevailing on a motion to dismiss when the court conducts a full-fledged extrinsic and selection and arrangement analysis. 

Fourth, The Curse of the Black Pearl and the plaintiffs’ screenplay were older properties; the Ninth Circuit pointed out that they were nearly 20 years old. In contrast, Inside Out was released around five years before the claim was brought in Masterson, and the poetry book came out nearly a decade before then. Since the Ninth Circuit explicitly held that expert testimony would be useful for the older properties in Alfred, plaintiffs with older or more established works may have an advantage. Objectively, it makes some sense that an expert should opine on the substantial similarity of works released many years ago, as a judge may not be aware of what elements were generic years ago compared to present day. At the same time, the plaintiffs’ screenplay in Alfred was not much older than the plaintiffs’ poetry book in Masterson, so it is unclear where the boundary of an older work lies. Still, the language in Masterson is something both plaintiffs and defendants should be aware of.   

Fifth, the behemoth success of The Curse of the Black Pearl and the resulting public awareness of it clearly played a role in Alfred. As the Ninth Circuit stated, the film itself may have shaped what are known today as pirate film tropes. Pirates of the Caribbean is arguably the most famous pirate movie franchise, and an expert could potentially be required to differentiate generic elements of the pirate subgenre from what the films may have created.

 Although Inside Out was undoubtedly a successful film too, it was not part of a franchise with the potential to influence a modern subgenre. For that reason, the Ninth Circuit may have been more forgiving of the district court for not requiring expert testimony where no confusion over generic and original elements existed. While defendants often tout that their work is genre-defining or the like, they should be careful of such puffery in the future. The Ninth Circuit may be more likely to require expert testimony under such circumstances.           

Sixth, each case cites a slightly different standard for when expert testimony is required before dismissing on substantial similarity. In Masterson, the court quoted a prior opinion affirming a dismissal without expert testimony where “[n]othing disclosed during discovery could alter the fact that the allegedly infringing works are as a matter of law not substantially similar.”[xxxi] Under that standard, expert testimony will be required only if it could actually change the outcome. However, the Ninth Circuit did not cite to the formulation of the expert testimony standard in Alfred. Rather, it held that expert testimony may be required where it would merely “help inform the question of substantial similarity” and “aid in determining whether the similarities [p]laintiffs identify are qualitatively significant.”[xxxii] Whether expert testimony is “helpful” rather than determinative to substantial similarity is, of course, significantly easier for a plaintiff to argue in opposition to a motion to dismiss.

Also missing from the expert testimony standard in Alfred is the Ninth Circuit’s quotation in Masterson to Rice v. Fox Broadcasting Company, which held that at summary judgment “it is not an abuse of discretion to reject expert testimony when the court ‘engage[s] in an extensive analysis of the alleged similarities in expressive elements.’”[xxxiii] That is exactly what the district courts in both cases did at the motion to dismiss stage, but Masterson’s reference to this standard evidently influenced its opposite outcome.

Given these alternate formulations of the expert testimony standard, it is evident that the higher bar for requiring expert testimony in Masterson resulted in dismissal even though the two works were not significantly more similar than those in Alfred. It is not apparent when the Ninth Circuit will apply these differing standards, however. What is certain is that plaintiffs should argue for the Alfred formulation while defendants should argue Masterson’s. Whichever standard the district or appellate court adopts can make or break the case.

much ado about nothing?

Analyzing new legal opinions can be illuminating, but as with any case, sometimes the facts are so specific that the applicability to later cases is limited. With that in mind, the recent trend of requiring expert testimony on substantial similarity might not be a trend at all but reflects that these are the rare cases where expert testimony is truly necessary.

Masterson itself shows that the Ninth Circuit has not completely withdrawn district courts’ power to rule on substantial similarity on a motion to dismiss. In that case, the court expressed a willingness to allow district courts to rely on their common sense and experience to dismiss lawsuits which are patently meritless.

Additionally, examining Alfred, there are multiple determinative facts that are unlikely to apply to most cases in the future. At minimum, a district court will usually address the selection and arrangement test, and few defendants’ works will be a successful film franchise so influential that it will have shaped an entire subgenre. Also, most colorable copyright lawsuits are not brought nearly 20 years after an allegedly infringing property is released, and thus would not require the testimony of experts familiar with older tropes. And while not openly determinative to the decision, the court may have found infringement more plausible due to credible allegations that Disney had direct access to the plaintiffs’ screenplay. 

On the other hand, perhaps Masterson is the rare case now where the Ninth Circuit will not require expert testimony before dismissal. It is infrequent that a copyright infringement case like Masterson reaches the Ninth Circuit — where the allegedly infringed work is short, has zero dialogue and could be characterized as a glorified picture book compared to a defendant’s full-fledged screenplay. The Ninth Circuit may have shifted gears towards mandating expert testimony in more typical cases between fully developed literary works.

Even so, it is too early to determine if this trend will extend to the whole Ninth Circuit rather than to particular judges with differing judicial philosophies. As substantial similarity cases continue to reach the court, this unknown factor will become clearer. For the moment, litigants should keep the lessons of Alfred and Masterson in mind and continue to research their panel’s views on dismissal for lack of substantial similarity without expert testimony.

looking ahead

In sum, a close comparison of Alfred and Masterson provides useful, practical advice for future litigants embroiled in copyright infringement lawsuits. Even though these and other substantial similarity cases last year involving literary works were unpublished and have no precedential effect, the Ninth Circuit’s willingness to cite unpublished dispositions on substantial similarity[xxxiv] counsels against ignoring them. 

Thus, moving forward, litigants should be aware and strategize accordingly because: (1) the selection and arrangement test continues to have vitality; (2) older or more influential works may require expert testimony to determine which elements were generic and unprotectable in the past; (3) plaintiffs’ shorter works may not require expert testimony on substantial similarity; and (4) different formulations of the expert testimony standard on a motion to dismiss exist, where expert testimony is required if it could change the outcome under Masterson or is merely helpful under Alfred. Until there is a new published decision regarding substantial similarity on a motion to dismiss, the only certainty is that a Ninth Circuit affirmance without expert testimony is no longer a foregone conclusion.

end notes

[i] See Christianson v. W. Pub. Co., 149 F.2d 202, 203 (9th Cir. 1945).

[ii] See, e.g., Esplanade Prods., Inc. v. Walt Disney Co., 768 F. App’x 732, 733 (9th Cir. 2019); Abdullah v. Walt Disney Co., 714 F. App’x 758, 759 (9th Cir. 2018); Shame on You Prods., Inc. v. Banks, 690 F. App’x 519, 520 (9th Cir. 2017).

[iii] Astor-White v. Strong, 733 F. App’x 407 (9th Cir. 2018).

[iv] White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1521 (9th Cir. 1993) (Kozinski, J., dissenting from denial of reh’g en banc).

[v] See Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 575 (1994) (“[I]n literature, in science and in art, there are, and can be, few, if any, things, which in an abstract sense, are strictly new and original throughout. Every book in literature, science and art, borrows, and must necessarily borrow, and use much which was well known and used before.”).

[vi] Alfred v. Walt Disney Co., 821 F. App’x 727 (9th Cir. 2020).

[vii] See Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072, 1077 (9th Cir. 2006), overruled on other grounds by Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020).

[viii] Alfred v. Walt Disney Co., 388 F.Supp.3d 1174, 1183-90 (C.D. Cal. 2019).

[ix] Alfred, 821 F. App’x at 729.

[x] Id.

[xi] Id.

[xii] Id.

[xiii] Metcalf v. Bocho, 294 F.3d 1069 (9th Cir. 2002).

[xiv] Alfred, 821 F. App’x at 729.

[xv] Id.

[xvi] Masterson v. Walt Disney Co., 821 F. App’x 779 (9th Cir. 2020).

[xvii] Id. at 780.

[xviii] Id.

[xix] Id.

[xx] Id.

[xxi] Id.

[xxii] Id. at 782.

[xxiii] Id. (quoting Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir. 1984)).

[xxiv] Id. at 781 n.1.

[xxv] Id. at 781 (quoting Rentmeester v. Nike, Inc., 883 F.3d 1111, 1123 (9th Cir. 2018), overruled on other grounds by Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020)).

[xxvi] Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009)).

[xxvii] Id.

[xxviii] “No case following Metcalf has found protection in the selection and arrangement of unprotectable similarities.” Robert F. Helfing, Substantial Similarity in Literary Infringement Cases: A Chart for Turbid Waters, 21 UCLA Ent. L. Rev. 1, 22 (2014).

[xxix] Id. at 782-83.

[xxx] Astor-White v. Strong, 817 F. App’x 502, 503 (9th Cir. 2020).

[xxxi] Masterson, 821 F. App’x at 781 (quoting Rentmeester v. Nike, Inc., 883 F.3d 1111, 1123 (9th Cir. 2018), overruled on other grounds by Skidmore v. Led Zeppelin, 952 F.3d 1051 (9th Cir. 2020)).

[xxxii] Alfred v. Walt Disney Co., 821 F. App’x 727, 729 (9th Cir. 2020).

[xxxiii] Rice v. Fox Broad. Co., 330 F.3d 1170, 1180 (9th Cir. 2003), overruled on other grounds by Skidmore, 952 F.3d 1051.

[xxxiv] Masterson, 821 F. App’x at 781 n.1.

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