OPINION AND ORDER
KOELTL, District Judge:
This is an action by the plaintiff, Lone Wolf McQuade Associates ("McQuade Associates"), arising out of rights held by the plaintiff relating to the 1983 motion picture "Lone Wolf McQuade." The central issue in this case is whether the popular television series "Walker, Texas Ranger" violates the plaintiff's rights in the movie "Lone Wolf McQuade."
On or about February 14, 1995, the plaintiff brought suit against defendant CBS, Inc. ("CBS") alleging that "Walker, Texas Ranger" violates its rights relating to "Lone Wolf McQuade" pursuant to the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and New York unfair competition and misappropriation law. In June, 1995, Orion Pictures Corporation ("Orion") intervened as a party plaintiff. Orion alleged, among other things, that CBS, Top Kick Productions, Inc. ("Top Kick"), and Chuck Norris (collectively, the "defendants") infringed its copyright rights in "Lone Wolf McQuade."
In a settlement agreement dated December 9, 1996, Orion granted CBS a retroactive license from January 1, 1990, in perpetuity to use "Lone Wolf McQuade" in connection with the television series, "Walker, Texas Ranger." On December 17, 1996, the Court so ordered a stipulation dismissing with prejudice all claims by Orion against the defendants.
The defendants
I.
The standard for granting summary judgment is well established. Summary judgment may not be granted unless "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Gallo v. Prudential Residential Servs. Ltd. Partnership, 22 F.3d 1219, 1223 (2d Cir.1994). "The trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution." Id., 22 F.3d at 1224.
The moving party bears the initial burden of "informing the district court of the basis for its motion" and identifying the matter that "it believes demonstrates[s] the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323, 106 S.Ct. at 2553. The substantive law governing the case will identify those facts which are material and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986). In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d 176 (1962)); see also Gallo, 22 F.3d at 1223.
If the moving party meets its burden, the burden shifts to the nonmoving party to come forward with "specific facts showing that there is a genuine issue for trial." Fed. R.Civ.P. 56(e). With respect to the issues on which summary judgment is sought, if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party, summary judgment is improper. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir.1994).
II.
There is no genuine dispute with respect to the following material facts. Pursuant to an agreement dated May 11, 1982 (the "1818 Agreement"), 1818 Productions, Inc. ("1818 Productions") transferred, sold, and assigned to Orion certain rights and interests with respect the motion picture "Lone Wolf McQuade." Produced and released in 1983, "Lone Wolf McQuade" is an action-packed movie starring Chuck Norris as J.J. McQuade, a Texas Ranger who uses martial arts. The main plot of "Lone Wolf McQuade" involves a group of evil drug dealers who hijack an army convoy in order to obtain a huge supply of ammunition and high-power weapons. J.J. McQuade ultimately chases the villains to Mexico where they are holding his daughter hostage and defeats them in a final battle with a combination of bullets, grenades, and martial arts.
In an agreement dated March 22, 1983 (the "Purchase Agreement"), Orion conveyed to McQuade Associates "all right, title and interest in and to all copyrights in the Film" but expressly did not convey and reserved various rights including "any interest whatsoever in and to ... [a]ny television series rights, so-called television `special' rights, remake or sequel rights, or any other ancillary rights and/or allied rights...." (Purchase Agreement at 1-2.) In the early 1990s, Orion discussed with CBS the possibility of a movie-of-the-week and television series based on "Lone Wolf McQuade," but an agreement never was reached regarding the proposal. (Orion Compl. ¶ 15; Answer to Orion Compl. ¶ 15.)
In or about 1993, CBS first broadcast "Walker: Texas Ranger, One Riot, One Ranger," a made-for-television movie starring
III.
The defendants first argue that summary judgment on the plaintiff's copyright claims is appropriate in this case because "Lone Wolf McQuade" and "Walker, Texas Ranger" are not substantially similar in their protectable expression. To succeed on a copyright infringement claim, a plaintiff with a valid copyright must prove that: (1) the plaintiff's work was actually copied by the defendant; and (2) the copying is illegal because there is a substantial similarity between the protectable material in the plaintiff's work and the defendant's work. See, e.g., Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir.1994). For the purpose of their motion, the defendants concede actual copying and do not dispute the validity of the copyright for "Lone Wolf McQuade."
In most cases, the test for substantial similarity is the ordinary observer test, which requires a determination whether the average lay observer would find that the defendant appropriated the alleged copy from the copyrighted work. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir.1995); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765-66 (2d Cir.1991). However, when a work contains both protectable and unprotectable elements, a court should apply the more discerning ordinary observer test by attempting to eliminate the unprotectable elements from consideration and comparing only the protectable elements for substantial similarity. See Knitwaves, 71 F.3d at 1002; Folio Impressions, 937 F.2d at 765-66; Laureyssens v. Idea Group, Inc., 964 F.2d 131, 141 (2d Cir. 1992). As explained by the Court of Appeals for the Second Circuit:
Fisher-Price, 25 F.3d at 123 (citations omitted).
But the more discerning ordinary observer test still takes into account the work's "total concept and feel.'" Knitwaves, 71 F.3d at 1003 (quoting Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir.1982)). The more discerning ordinary observer test does not stand for the broad proposition
Knitwaves, 71 F.3d at 1003 (quoting transcript of district court proceedings of Sept. 1, 1992, at 4); see also M.H. Segan Ltd. Partnership v. Hasbro, Inc., 924 F.Supp. 512, 521 (S.D.N.Y.1996) ("Through Knitwaves, the Second Circuit has recently reconfirmed that the more discerning ordinary observer test is not an invitation to dissect a work into its constituent elements or features. The works as a whole must be compared to each other."). The author's original contributions are protectable including "the original way in which the author has `selected, coordinated, and arranged' the elements of his or her work." Knitwaves, 71 F.3d at 1004 (quoting Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358, 111 S.Ct. 1282, 1294, 113 L.Ed.2d 358 (1991)).
A.
The defendants argue that "Lone Wolf McQuade" and "Walker, Texas Ranger" are not substantially similar as a matter of law because any similarities between the two works and the two main characters themselves involve only non-protectable elements. Although they do not dispute that the plaintiff's copyright in "Lone Wolf McQuade" extends to the character J.J. McQuade, the defendants contend that the similarities between J.J. McQuade and Cordell Walker simply reflect general themes, scenes a faire, and basic stock elements that can be found in many action adventure heros and are not protectable. See Walker v. Time Life Films, Inc., 784 F.2d 44, 50 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986); Williams v. Crichton, 84 F.3d 581, 587 (2d Cir.1996); Warner Bros. Inc. v. American Broadcasting Cos., Inc., 654 F.2d 204, 208 (2d Cir.1981). In finding that the motion picture "Fort Apache: The Bronx" did not infringe on the book "Fort Apache," the Court of Appeals discounted numerous similarities based on the general experiences of police battling the hostile environment in the 41st Precinct in the Bronx:
Walker, 784 F.2d at 50 (citation omitted).
The allegedly unprotectable similarities between J.J. McQuade and Cordell Walker include the following: both are mavericks who fight injustice, resist cooperation with the authorities and their direct superiors, and behave unconventionally; both are Texas Rangers; both use martial arts; both wear jeans and a casual shirt, with or without a vest, with an attached shield; both drive 4 × 4 off-road vehicles with lights on the roof; both have a partner of a minority ethnic group; and both are reluctant about taking on a young or inexperienced partner. The defendants support their argument with numerous clips of other action-packed adventures from the Lone Ranger with his faithful sidekick Tonto to more recent footage of Chuck Norris and other modern heroes battling villains with martial arts.
However, the plaintiff correctly argues that this Court should not engage in a detailed dissection of the character traits of J.J. McQuade and Cordell Walker. In Warner Bros. Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231 (2d Cir.1983), the Court of Appeals rejected the
Id. at 243. Instead, the Court should determine "the total concept and feel" of the two characters and "the total concept and feel, theme, characters, plot, sequence, pace and setting" of the two works. Williams, 84 F.3d at 588. The Warner Bros. court instructed:
Warner Bros., 720 F.2d at 242.
The plaintiff also contends that the character J.J. McQuade could also be considered a non-factual compilation of carefully selected character traits that constitutes a creative act protected by copyright. See Feist Publications v. Rural Telephone Serv. Co., Inc., 499 U.S. 340, 356-59, 111 S.Ct. 1282, 1293-95, 113 L.Ed.2d 358 (1991); Knitwaves, 71 F.3d at 1003-04.
Whether J.J. McQuade is treated as a copyrightable character with an aggregation of particular talents and traits or a copyrightable non-factual compilation, the result is the same. A review of "Lone Wolf McQuade," "Walker: Texas Ranger, One Riot, One Ranger," and the series "Walker, Texas Ranger" confirms that there are numerous characteristics that are common to both J.J. McQuade and Cordell Walker that contribute to an overall perception of the characters and the works as similar. These similarities include the two characters' approaches to law enforcement, style, fighting technique, characteristic behavior, and methods of operation as modern-day Texas Rangers, their portrayal by Chuck Norris, their attitudes toward authority and rules, and their style of attire and choice of vehicle. Viewing these works, a reasonable jury could conclude that an ordinary lay observer would view the characters J.J. McQuade and Cordell Walker and the works at issue as substantially similar. A reasonable jury could conclude that the total combination of all the traits of Cordell Walker are substantially similar to those of J.J. McQuade and not simply reminiscent of that character. See M.H. Segan, 924 F.Supp. at 521 (finding summary judgment inappropriate on the issue of substantial similarity between two toys, Big Frank and Frankenstuff).
B.
The defendants also assert that the differences between "Lone Wolf McQuade" and "Walker, Texas Ranger" are so profound that no reasonable juror could find that the total concept and feel of the works are substantially similar. The defendants argue that the differences overwhelm the similarities between the two characters. The defendants argue that J.J. McQuade and Cordell Walker are wholly dissimilar characters with different backgrounds, personalities, temperaments, attitudes, life experiences, family situations, living situations, and alliances; that their partners have completely different personalities and roles; that their relationships with their partners are different; that they dress differently and drive different off-road vehicles; that the works have a different tone and mood; and that the works seek to teach different messages regarding social consciousness, tolerance for differences, and the legal system.
A review of the works establishes that the alleged differences are in fact exaggerated. Whether, for example, J.J. McQuade typically wears dirty jeans and Cordell Walker generally wears clean jeans (except when he goes out into the field and battles in the dirt), and whether J.J. McQuade drives a mud splattered white Dodge Ram while Cordell Walker drives a clean blue or gray pick up
In any event, as the Court of Appeals has instructed,
Williams, 84 F.3d at 588 (citation omitted). A review of the characters and the works in their entirety confirms that the similarities between the works explained above are not of such "small import quantitatively or qualitatively" that this Court should hold as a matter of law that no reasonable trier of fact could find the works substantially similar.
Accordingly, because there are disputed issues of material fact regarding whether "Lone Wolf McQuade" and "Walker, Texas Ranger" are substantially similar, the plaintiff's copyright claims cannot be dismissed on this basis.
IV.
The defendants' second alleged basis for summary judgment, which is advanced in their supplemental motion, is that the plaintiff has no copyright infringement claim because CBS obtained from Orion a retroactive license to use "Lone Wolf McQuade" in connection with the television series "Walker, Texas Ranger" from January 1, 1990, in perpetuity. The defendants contend that Orion had the authority to grant the license to CBS because under the Purchase Agreement, Orion retained the right to make a television special and a television series based on "Lone Wolf McQuade."
In its opposition papers, the plaintiff advances four arguments why the CBS retroactive license is not valid. First, it contends that Orion had no right or authority to grant a retroactive license to CBS because Orion did not perform the conditions precedent to the effectiveness of its television rights contained in the 1818 Agreement.
(1818 Agreement § 7.01(f).) The plaintiff submits that affidavits of the two principal shareholders of 1818 Productions, Yoram Ben-Ami and Steven Carver, are extrinsic evidence that the grant of television and ancillary rights was subject to the condition precedent of prior approval of the producer, 1818 Productions. (Ben-Ami Aff. ¶ 3; Carver Aff. ¶ 3.) See Hanson v. McCaw Cellular Communications, Inc., 77 F.3d 663, 667 (2d Cir.1996) (explaining that under California law, "even if a contract is integrated, parol evidence is admissible to explain the meaning of the contract, if the contract is ambiguous"). The plaintiff asserts that because Orion never sought the approval of 1818 Productions with respect to any television series rights, there is a question of fact as to whether any rights to make a television series ever vested in Orion and therefore whether Orion had the right to give a retroactive license to CBS.
However, the affidavits submitted by Mr. Ben-Ami and Mr. Carver only establish that the prior approval of 1818 Productions was not sought prior to the production of the
(1818 Agreement § 7.01.) § 7.01(a) thus unconditionally grants Orion, among other things, "all television series rights" and "television special rights" and makes clear that no other references in the agreement "affect or alter" the rights so granted. Section 7.01(f), on which the plaintiff relies, is such a reference. Moreover, "[c]onditions precedent are not favored in the law, and courts shall not construe a term of the contract so as to establish a condition precedent absent plain and unambiguous contract language to that effect." Frankel v. Board of Dental Examiners, 46 Cal.App.4th 534, 550, 54 Cal.Rptr.2d 128, 137-38 (1996); see also In re Marriage of Hasso, 229 Cal.App.3d 1174, 1181, 280 Cal.Rptr. 919, 923 (1991); Helzel v. Superior Court of Alameda County, 123 Cal.App.3d 652, 663, 176 Cal.Rptr. 740, 745-46 (1981).
Because the requirement in § 7.01(f) that Orion obtain the approval of the Producer and negotiate in good faith with respect to its television rights is a covenant rather than a condition precedent, any breach of § 7.01(f) by Orion does not result in a loss of its television series rights. Instead, a breach of § 7.01(f) gives 1818 Productions the right to sue for damages. Section 3.02 of the 1818 Agreement makes this clear:
(1818 Agreement § 3.02 (emphasis added).) Thus, 1818 Productions' only recourse for "any failure or breach of any kind" by Orion "shall be an action for an accounting or for damages." See Fosson v. Palace (Waterland), Ltd., 78 F.3d 1448, 1455 (9th Cir.1996) ("[I]n California `[a] clear and unambiguous contractual provision providing for an exclusive remedy for breach will be enforced.'") (quoting Price Dev. Co. v. Redevelopment Agency, 852 F.2d 1123, 1127 (9th Cir.1988)).
Second, the plaintiff argues that the CBS retroactive license is not valid because Orion's right to make and/or authorize others to make a television special or television series extends only to "free" television and not to pay or cable television. The plaintiff contends that the Purchase Agreement, under which Orion retained "[a]ny television series rights, so-called television `special' rights, remake or sequel rights, or any other ancillary rights and/or allied rights (including, without limitation, theatrical stage rights)," (Purchase Agreement at 2), defines "television" as "`free' television," (Purchase Agreement at 4), and that the reference to "[a]ny television series rights" retained by Orion refers only to television series rights with respect to "free" television. However, the plain language of the Purchase Agreement contradicts this interpretation. The Purchase Agreement defines the term "`television' rights," not the term "television," and defines it in the section that discusses the television rights in the film "Lone Wolf McQuade" conveyed to the plaintiff, (Purchase Agreement at 2-4), rather than in the section that discusses the television series rights retained by Orion, (Purchase Agreement at 1-2). The section that discusses the television series rights and television special rights retained by Orion does not limit these rights to "free" television.
Third, the plaintiff argues that the Court's prior decision denying Orion's motion for summary judgment is the law of the case and precludes summary judgment for defendants on the copyright claim because of the ambiguities in the Purchase Agreement. "The `law of the case' doctrine posits that if a court decides a rule of law, that decision should continue to govern in subsequent stages of the same case." Sagendorf-Teal v. County of Rensselaer, 100 F.3d 270, 277 (2d Cir.1996). The law of the case is discretionary and does not prevent reconsideration prior to final judgment. See id. In any event, the issue decided on the prior motion — whether Orion had exclusive standing to sue defendants for copyright infringement — is different from the issue on this motion — whether Orion retained the right to make a television series based on "Lone Wolf McQuade." Accordingly, the "law of the case" does not bar the Court's decision on this motion.
Fourth, the plaintiff argues that Orion's retroactive license in favor of CBS does not cure any infringement that occurred prior to the date of the grant of the license. However, a retroactive license can cure past infringements. See SBK Catalogue Partnership v. Orion Pictures Corp., 723 F.Supp. 1053, 1059 (D.N.J.1989) (referring to the court's prior decision in which it found "that the Partnership was entirely within its rights to grant a retroactive license to the Orion defendants and that an authorization from one joint copyright owner is an effective defense to an infringement action brought by another joint owner"); cf. Hanson PLC v. Metro-Goldwyn-Mayer Inc., 932 F.Supp. 104, 105-06 (S.D.N.Y.1996) (describing counsel's
Accordingly, because CBS obtained a valid retroactive license to use "Lone Wolf McQuade" in connection with its television special and its television series "Walker, Texas Ranger," the defendants' motion to dismiss the plaintiff's copyright claims involving the broadcast of those works on "free," pay, and cable television is granted.
At oral argument the plaintiff also argued that, even if the retroactive license to CBS is valid, it did not apply to the plaintiff's copyright claims that involve allegations that the television movie "Walker: Texas Ranger, One Riot, One Ranger" has been sold on videotape in stores and has been shown in movie theaters. (Tr. of Hr'g at 27-29.) In its Second Amended Complaint, the plaintiff alleges that "CBS, and others in concert ... has facilitated, and will continue to facilitate, videotape rentals and/or sales of the Made-for-TV Movie and/or the Infringing Works." (2d Am.Compl.¶ 31.) At oral argument, the defendants asserted that Orion has the right to sell videocassettes of the television movie pursuant to the Purchase Agreement. (Tr. of Hr'g at 40.) However, this issue has not been briefed by either party and it would be inappropriate to dispose of it without the opportunity for all parties to brief it. Accordingly, the defendants' motion to dismiss the plaintiff's copyright claims involving allegations of videotape rentals and/or sales of the television movie and/or the television series is denied without prejudice.
V.
The defendants argue that the plaintiff's misappropriation and unfair competition claims should be dismissed because they are preempted by the Copyright Act of 1976 and because they are precluded by CBS's retroactive license. With respect to the defendants' preemption argument, the Copyright Act expressly provides that "all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 ... are governed exclusively by [the Copyright Act]." 17 U.S.C. § 301(a). This preemption of state law is limited by section 301(b), which provides that "[n]othing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to ... activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106...." 17 U.S.C. § 301(b)(3). The Copyright Act grants copyright holders the exclusive right "(1) to reproduce the copyrighted work ...; (2) to prepare derivative works based upon the copyrighted work; (3) to distribute copies ... of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending; (4) ... to perform the copyrighted work publicly; and (5) ... to display the copyrighted work publicly." 17 U.S.C. § 106.
"A state cause of action is preempted by federal copyright laws if the subject matter of the state-law right falls within the subject matter of the copyright laws and the state-law right asserted is equivalent to the exclusive rights protected by federal copyright law." Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir.1993), cert. denied, 510 U.S. 1112, 114 S.Ct. 1056, 127 L.Ed.2d 376 (1994); see also National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 848 (2d Cir.1997); Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 199-200 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). There is no preemption if "`[a]n extra element is required instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action.... A state law claim is not preempted if the extra element changes the nature of the action so that it is qualitatively different from a copyright infringement claim." Kregos, 3 F.3d at 666 (quoting Computer Assocs. Int'l v. Altai, Inc., 982 F.2d 693, 716 (2d Cir.1992) (citations omitted)) (internal quotations omitted); see also National Basketball Ass'n, 105 F.3d at 850. The Court of Appeals has determined that section 301
In this case, the plaintiff does not contest the fact that the Copyright Act preempts its misappropriation claim and unfair competition claim based on copying. However, the plaintiff asserts that its unfair competition claim is based primarily on passing off and confusion as to source and therefore is not preempted. In its Second Amended Complaint, the plaintiff alleges:
(2d Am.Compl.¶¶ 37-38.) The scope of this claim has not been developed on this motion. Although the defendants argue that CBS's retroactive license precludes the plaintiff's unfair competition claim, the parties have not yet briefed the issue of whether Orion received the right in the 1818 Agreement to "pass off" its works as sponsored by or affiliated with "Lone Wolf McQuade" or whether Orion retained that right in the Purchase Agreement and it would be inappropriate to dispose of that issue without the opportunity for all parties to brief it and present any relevant evidence. The plaintiff's unfair competition and misappropriation claims, like their copyright claims, are therefore precluded except to the extent that the unfair competition claim is based on confusion as to source.
Accordingly, the defendants' motion to dismiss the plaintiff's misappropriation claim is granted. The defendants' motion to dismiss the plaintiff's unfair competition claim is granted except to the extent that it is based on confusion as to source.
VI.
The plaintiff also invites the Court to search the record and determine that the plaintiff is entitled to summary judgment as a matter of law on its copyright infringement claim because no reasonable juror could fail to conclude that "Lone Wolf McQuade" and "Walker, Texas Ranger" are substantially similar. However, the defendants correctly argue that they conceded copying only for purposes of their motion for summary judgment in order to test the substantial similarity of the works. They have not otherwise conceded, nor has the plaintiff shown, that there are no genuine issues of fact with respect to copying. Moreover, although there are definite similarities between the two works, whether these similarities rise to the level of substantial similarity is a disputed issue of material fact that cannot be resolved upon this motion. Accordingly, the plaintiff's motion for summary judgment on its copyright claim is denied.
CONCLUSION
For the reasons explained above, the defendants' motion to dismiss the plaintiffs' copyright claims is
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