Benay v. Warner Bros. Entertainment, Inc.

Ninth Circuit affirms summary judgment for creators of film The Last Samurai on copyright infringement claim but reverses and remands claim for breach of implied-in-fact contract.

Plaintiffs wrote a screenplay entitled The Last Samurai which is based upon an American war veteran going to Japan to help the Imperial Army by training it in the methods of modern Western warfare for its fight against a samurai uprising. Plaintiffs’ agent orally pitched the idea to defendant production company and subsequently sent defendants a copy of the screenplay. The production company informed plaintiffs that it had decided to pass on the screenplay because defendants already had a similar project in development. On December 5, 2005, exactly two years after the public release of the film, plaintiffs filed suit against defendants asserting inter alia claims of copyright infringement and breach of implied-in-fact contract. The district court granted summary judgment to defendants on both claims. Plaintiffs appealed. The Ninth Circuit affirmed in part, reversed in part and remanded.

In affirming summary judgment on plaintiffs' copyright infringement claim, the Ninth Circuit considered whether there is substantial similarity between the protected elements of the screenplay and comparable elements of the film. The court found that many more differences than similarities existed between the protectable elements of plaintiffs’ screenplay and defendants’ film. The court noted that the most important similarities “involved unprotectable elements” such as historical facts, familiar stock scenes, and characteristics that flow naturally from the works’ shared basic stock premise.

The court, however, reversed on the issue of plaintiffs’ breach of contract claim. The court explained that, to establish a claim for breach of an implied-in-fact contract based on the submission of their screenplay, plaintiffs must demonstrate that they submitted the screenplay for sale to defendants, conditioned the use of the screenplay on payment, defendants knew or should have known of the condition, defendants voluntarily accepted the screenplay, defendants actually used the screenplay, and the screenplay had value. In support of their motion, defendants argued that plaintiffs (1) could not establish actual use of the screenplay, (2) failed to file their contract claim within the two years required by the California statute of limitations, and (3) failed to establish privity of contract between plaintiffs and certain of the defendants. Because plaintiffs’ claim is based in contract, the court held that “unauthorized use can be shown by substantially similar elements that are not protected under copyright law.” For purposes of an implied-in-fact contract under California law, the court found that the screenplay and the film share sufficient similarities to raise a triable issue of fact.

With regard to defendants’ contention that plaintiffs’ breach of contract claim began to accrue when plaintiffs became aware of defendants’ use of the screenplay, the court noted that California courts generally assume that the accrual date is the date on which the work is released to the general public. As plaintiffs filed suit exactly two years after the release of the film, their claim was not time-barred. And finally, although the court acknowledged that privity between parties is a necessary element of an implied-in-fact contract claim, it declined to the determine whether privity existed as the issue was not properly presented to the district court.