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Doody v. Penguin Group (USA) Inc., et al.

Rejecting proposition that it should compare plaintiff’s book Gold of the Khan to five books by Clive Cussler and Dirk Cussler as a whole, court finds that the Cussler books, which were fast-paced action adventures emphasizing technology and the ocean, were not substantially similar in their protected elements to plaintiff’s book about a female history professor who finds Marco Polo’s lost treasure and love, and grants summary judgment for defendants on claims for copyright infringement and plaintiff’s state law claims

In 2003, plaintiff Louis Doody authored Gold of the Khan, a novel about a history professor, Marya Bradwell, who searches for and finds Marco Polo’s lost treasure hidden in Croatia and falls in love along the way. Plaintiff registered the novel with the U. S. Copyright Office and sent two drafts of his manuscript to defendant Penguin Group in consideration for publishing at the company’s request. Although one of its editorial assistants enjoyed the story and had requested a few “reads” of the manuscript, Penguin ultimately rejected Gold of the Khan. In 2006, plaintiff saw Treasure of Khan, written by Clive and Dirk Cussler and published by defendant, in a bookstore and believed that it, along with four other Cussler books, Trojan Odyssey, Lost City, The Navigator, and Golden Buddha (the “Cussler Books”), have substantial similarities to Gold of the Khan. Plaintiff brought a federal action against Penguin and the authors for copyright infringement, along with state law claims of conversion, unfair and deceptive trade practices, and breach of implied contract.

In their motion for summary judgment, defendants argued that the Cussler Books, which are fast-paced action adventures emphasizing technology and the ocean, and plaintiff’s Gold of the Khan are not substantially similar in their protected elements. While plaintiff conceded that there were not enough similarities between Gold of the Khan when compared to the Cussler Books separately, plaintiff urged the court to compare Gold of the Khan with all of the Cussler Books as a whole. In any event, plaintiff asserted, sufficient similarities existed between Gold of the Khan and Treasure of Khan to create a fact question for the jury. The court found that defendants were entitled to summary judgment. Treasure of the Khan follows rugged scientists, Dirk Pitt and his sidekick Giordano, in their efforts to foil an evil plot by a Mongolian oil tycoon and their discovery of the tombs of Genghis Khan and Kublai Khan along the way.

In commencing its analysis, the court outlined the elements of a claim for copyright infringement. To establish infringement, plaintiff must prove (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. Because plaintiff’s ownership in the copyright was undisputed, the issue before the court was whether there was a triable issue of fact that defendants “copied anything that was original” to plaintiff’s Gold of the Khan. Whether defendants copied Gold of the Khan, the court explained, may be established by showing that the works in question “are substantially similar in their protected elements and that the infringing party had access to the copyrighted work.” The court further instructed that, for purposes of summary judgment, courts must apply an extrinsic test to determine whether two works are substantially similar. This test, the court stated, objectively focuses on “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in the two works.”

In applying the extrinsic test, courts must distinguish between protectable and unprotectable material because a party claiming infringement may place “no reliance upon any similarity in expression resulting from unprotectable elements.” Therefore, the court must filter out and disregard the non-protectable elements of the relevant works and inquire only whether the protectable elements, standing alone, are substantially similar.

As a threshold matter, plaintiff argued that the court must assess substantial similarity not merely between Gold of the Khan and each of the Cussler Books separately, but between Gold of the Khan and the Cussler Books collectively. The court found this argument counter to the extrinsic test and noted that in Litchfield v. Spielberg, 736 F.2d 1352 (9th Cir. 1984), the Ninth Circuit, rejected this proposition. If the court accepted plaintiff’s position, the court noted, copyright infringement would be established based on isolated similarities between Gold of the Khan and all of the Cussler Books, even though each Cussler Book does not share substantial similarities with Gold of the Khan. This result, the court concluded, “is simply untenable.” Because plaintiff conceded that Gold of the Khan and the individual Cussler Books other than Treasure of Khan do not have enough similarities to support a copyright infringement claim, the court only considered whether Gold of the Khan and Treasure of Khan were substantially similar.

Next, the court compared the individual features of Gold of the Khan and Treasure of Khan for specific similarities between plot, theme, dialog, mood, setting, pace, characters, and sequence of events. With regards to the first inquiry, the court found that Gold of the Khan and Treasure of Khan involve vastly different plots. Gold of the Khan involves a female professor following clues in Marco Polo’s journal to find his lost treasure and the “Tablets of Command” hidden in a church in Croatia. Treasure of Khan, on the other hand, involves two rugged male scientists’ efforts to foil the plot of an evil oil tycoon and to save oil surveyors from harm, and their discovery of the tombs of Genghis Khan and Kublai Khan. The closest similarity, the court noted, is that in both works characters are kidnapped (one by a Mongolia drug lord and one by a Mongolian oil tycoon), driven over rough terrain for several hours and past a sizeable city to a mansion, and held by a wealthy Mongolian villain who attempts to force his captives to help him. In addition to concluding that this was “merely a general idea and not a form of literary expression protected against copying,” the court further noted that the ideas are expressed very differently in each work.

Addressing plaintiff’s list of 83 plot “similarities” between the two works, the court cautioned that lists such as the one presented by plaintiff, which emphasize random similarities scattered throughout works, are “inherently subjective and unreliable.” Looking at the substance of plaintiff’s asserted similarities, the court found that none of them identified a substantial similarity of a protected element.

Second, the court assessed the parallels between the characters in Gold of the Khan and Treasure of Khan. The court found that the only characters in the two works that have some similarities are the Mongolian villains. The court acknowledged that in both works the villain believes he is a descendent of Genghis Khan, has collected antiquities from the Mongolian empire, lives in a lavish mansion, and is motivated, at least in part, to reunite portions of China with Mongolia. The court nevertheless concluded that these similarities on their own are too general to support a finding of substantial similarity as many fictional works “include villains who believe they are descendants of Genghis Khan.”

Similarly, the court found that the main theme uniting both works—perseverance over insurmountable odds—is not protectable because such similarity is common to the “genre of action-adventure television series.” Moreover, the court rejected plaintiff’s assertion that a common theme between the works is “separatist movements among minority people in China.” The court reasoned that because the expression of the general subject of “separatist movements among minority people in China” differs between the two books, the subject does not support an inference of substantial similarity.

With regard to the remaining elements of the extrinsic test, the court concluded that both works have a number of international settings, but with very little overlap. Viewed within the story as a whole, the court stated, the overall settings are vastly dissimilar. Additionally, the court determined that in contrast to Gold of the Khan’s pedestrian, straight conversation/exposition, Treasure of Khan, like other Cussler Books, involves witty dialog, with the characters managing to crack jokes in the face of every tense situation. And finally, the court found that the sequence of events, mood, and pace of the two works all differ dramatically.

Plaintiff raised three additional arguments as to why summary judgment was still inappropriate in the absence of substantial similarities of protected elements in the works. First, plaintiff contended that the court should consider the fact that the titles of Gold of the Khan and Treasure of Khan are “nearly identical.” Using the word “Khan,” the court declared, is “hardly indicative of copying where both works involve finding treasure of Kublai Khan and/or Genghis Khan.” Second, plaintiff argued that even though the similarities between the works are not themselves unusual or unique, the cumulative weight of the similarities was sufficient to raise a fact question for the jury. The court remarked that unlike previous instances where the cumulative facts were sufficient to raise a question of fact, a jury could not interpret that any similarities between Gold of the Khan and Treasure of Khan were the result of copying and “not mere coincidence.” And third, plaintiff argued that he was entitled to application of the inverse ratio rule. The inverse ratio rule, the court explained, provides that where a defendant had a high degree of access to plaintiff’s work, a lower standard of proof of substantial similarity is required. The court also instructed that claims of access cannot be based on inference and speculation and that courts have generally applied the inverse ratio rule where the defendant has conceded access. Here, Cussler and his fellow authors did not concede that they received plaintiff’s work. The court found that plaintiff failed to present “significant, affirmative and probative evidence” that defendants had a high degree of access to Gold of the Khan.

Finally, the court considered whether plaintiff’s state law claims for conversion, unfair and deceptive trade practices, and breach of implied contract were preempted by federal copyright law. The court noted that there is no question that plaintiff’s Gold of the Khan falls within the subject matter of copyright. Thus, the court reasoned, the question is whether plaintiff seeks to vindicate a right that is equivalent to the rights afforded by section 106 of the Copyright Act. Although the court recognized that conversion claims involving the return of tangible property are generally immune from preemption, it held that conversion actions seeking only damages for reproduction of property are preempted by the Copyright Act. Because plaintiff’s conversion claim alleged that defendants exercised complete control over his work and plaintiff sought to recover the full value of the intellectual property, the claim was based on rights protected by the Copyright Act. Moreover, finding the Ninth Circuit had not directly addressed the issue, the court found that the scope of the Copyright Act’s subject matter is broader than its protections and that the subject matter of copyright under section 301 of the Act includes uncopyrightable elements such as plaintiff’s ideas.

In considering plaintiff’s unfair and deceptive trade practices claim, the court concluded that because plaintiff’s claim relied expressly on the allegation of copyright infringement, it is “based solely on rights equivalent to those protected by the federal copyright law.” Accordingly, the court held that federal copyright law preempted plaintiff’s unfair and deceptive trade practices claim.

Finally, the court considered the preemption of plaintiff’s breach of implied contract claim. Here, plaintiff alleged that Penguin fully understood and expected that, should Penguin use plaintiff’s literary work, Penguin would compensate plaintiff for the reasonable value of the work. The court agreed, concluding that plaintiff’s breach of implied contract claim is not equivalent to a copyright infringement claim. Nonetheless, the court granted defendants’ motion for summary judgment because, among other reasons, there was no evidence that defendants misappropriated plaintiff’s work in any way.