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STEPHEN REBIKOFF[*]
[The protection by copyright of literary and dramatic plots is often cited as an example of the absurdities which can result from the recognition of intellectual property rights. It is well established, however, that copyright can protect narrative, and that theft of a story can found an action for infringement, although the operation of the law in this area is clouded with confusion and misapplication. It is submitted that the query at the heart of any determination of infringement is the extent of similarity between the two works in dispute, and that the law of copyright provides little guidance as to how a court is to answer this question where the subject of the breach is the plot of a literary or dramatic work. This article proposes a reconsideration of the courts’ approach which takes into account the methods of literary theory in an effort to provide consistency and clarity.]
CONTENTS
In 1762, the anonymous author of An Enquiry in the Nature and Origin of Literary Property bemoaned the ‘strange changes’ which would follow the creation of a common law system of copyright: ‘Poet would commence his Action against Poet, and Historian against Historian, complaining of literary Trespasses. Juries would be puzzled, what Damage to give for the pilfering of an Anecdote, or purloining the Fable of a Play.’[1] Over the past century, both in Australia and overseas, courts have witnessed with increasing frequency the enactment of this prophecy, as novelist commences action against novelist — or, more commonly, screenwriter — complaining of copyright infringement. Michael Crichton,[2] Steven Spielberg,[3] Jane Campion[4] and J K Rowling[5] are just a few of the prominent authors and directors who have, in recent years, been the subject of allegations that they copied another author’s previously published story without permission. Increasingly, moreover, it is the courts that are being called upon to determine the veracity of such claims by analysing the plots of the disputed works in the context of an action for breach of copyright.
To the casual observer, there must be a sense of absurdity in the spectacle of a court sagely embarking upon this exercise in literary demarcation. Indeed, Benjamin Kaplan has noted that it runs contrary to common perceptions about the process of creativity, protesting that ‘if man has any “natural” rights, not the least must be a right to imitate his fellows, and thus to reap where he has not sown.’[6] The difficulty of determining infringement is exacerbated by the fact that copyright does not purport to be concerned with ‘creative’ or ‘aesthetic’ originality.[7] How, then, can a judge determine what has been copied and what is merely foraged from the ‘literary commons’? Over a century ago, Birrell warned:
Plots, situations, and scenes have been the common property, both of novelists and dramatists, for so long a time that to attempt to set them out now by metes and bounds ... would tax even the lettered intellect of a judge of the Chancery Division.[8]
In the leading Australian case on the subject, Zeccola v Universal City Studios Inc, Gray J of the Supreme Court of Victoria declared: ‘Ultimately the matter comes down to the subjective impression of the Judge who makes the comparison.’[9]
Given the extent of the uncertainty in this area, it is perhaps surprising that the judiciary has not turned to specialist theory for tools to employ in conducting its analysis. In particular, it is interesting to note that developments in literary and film theory have largely been ignored by commentators[10] and by the courts[11] in making comparisons between plots, and determinations about similarity. This omission has occurred despite the fact that, since the beginning of the 20th century, literary theory has attempted to develop systematic and ‘scientific’ mechanisms for the analysis of narrative. Under the rubric of ‘structuralism’, critics such as Ferdinand de Saussure, Claude Lévi-Strauss and Vladimir Propp have elaborated theories which involve analysing the underlying structure of language and language systems such as myth and narrative. In the 1920s, the critical school known as the ‘Russian formalists’ utilised structuralist theories to develop a methodology and terminology for the analysis of narrative which lend themselves readily to the comparison of plots. This method, it is argued, is ideally suited to adaption for the purpose of analysing the plot of a literary or dramatic work in the context of an action for breach of copyright.
The purpose of this article, then, is to critically discuss how courts in Australia determine cases of copyright infringement where the subject of the breach is the plot of a literary or dramatic work. The article aims to examine the law as it applies to literary and dramatic plots, to trace its development and contemporary application, and to demonstrate how it might be clarified by adapting techniques and methods from outside of the law — specifically, from literary theory, and the critical movement known as ‘structuralism’. The article will analyse the methods used by courts to compare plots for the purposes of determining breach of copyright, and propose a reconsideration of the courts’ approach which takes into account a stream of critical thinking hitherto neglected in the determination of such questions. Though many of the analytical tools which are employed by the courts already reflect the influence of these critical theories, this article will argue for an approach which makes that influence explicit by employing, in a consistent and predictable way, the methods and terminology of those theories.
The structure of the article is as follows. Part II outlines the historical background to the protection by copyright of literary and dramatic plots, and demonstrates how it resulted primarily from an expansion in the scope of copyright protection over the first two centuries of its existence. Part III describes the current framework for protection, and illustrates how the plot of a literary or dramatic work can form the subject of an action for breach of copyright under the Copyright Act 1968 (Cth) (‘the Act’). Part IV examines the ways in which courts in the United States, where the majority of the litigation concerning the protection of plots is conducted, have approached the task of comparing plots for the purpose of determining the issue of copyright infringement, and compares the US position with that in Australia where cases of plot infringement have been relatively scarce. Part V gives a brief introduction to the principles of literary theory which, it is argued, are most suited to analogy with the comparison to be undertaken by the courts. Finally, Part VI proposes a reconsideration of the courts’ approach which incorporates the techniques and methods of literary theory, and demonstrates how such an approach might operate in practice.
The history of copyright since its genesis in the Statute of Anne in 1709[12] is largely one of piecemeal expansion resulting in an unanticipated accretion of rights, and nowhere is this more evident than in the history of copyright protection for plot. The Statute of Anne provided that whoever held the ‘Copy’ in a book had ‘the sole liberty of printing and reprinting’ that book, and that anyone who infringed that right was liable to ‘forfeit such Book or Books, and all and every Sheet or Sheets’ so the owner should ‘forthwith Damask and make Waste Paper of them.’[13] Kaplan has concluded from this language that ‘the draftsman was thinking as a printer would — of a book as a physical entity’[14] and that the original intention behind the statute was that it be limited to rights in material objects. By 1769, following a series of debates on the nature of the right conferred by the statute,[15] the courts had established that the subject of the right was incorporeal in character, but limited to the precise words of the author’s original work.[16] In Jefferys v Boosey, Erle J described the subject of literary property as
the order of words in the author’s composition; not the words themselves, they being analogous to the elements of matter, which are not appropriated unless combined, nor the ideas expressed by those words, they existing in the mind alone ...[17]
The scope of the right continued to be challenged, however, particularly in relation to derivative versions of existing works. Indeed, Kaplan identifies the ‘first substantial question to arise under the Statute of Anne’ to be that of infringement by translation.[18] In 1720, Dr Thomas Burnett brought an action against the translator of his Latin work Archaeologaie Philosophicae. The defendant’s justification was that a translation ‘in some respects may be called a different book, and the translator may be said to be the author, in as much as some skill in language is requisite thereto, and not barely a mechanic art, as in the case of reprinting in the same language.’[19] The judge appeared to accept the defendant’s argument that, if the translation was a work of authorship, it could not at the same time be a copy.[20] The issue recurred in subsequent cases involving abridgements,[21] histories[22] and maps.[23] Kaplan notes that, in each of these cases, the question of copying was resolved ‘by looking not so much to what the defendant had taken as to what he had added or contributed.’[24]
Over the course of the 18th and 19th centuries, however, the copyright legislation was successively amended to incorporate within the exclusive rights of the copyright holder these kinds of derivative uses of existing works. Between 1734 and 1842, 10 acts were passed[25] which extended the scope of the right under the Statute of Anne, either by providing new exclusive rights for the copyright holder, such as the Dramatic Copyright Act of 1833, which added an exclusive right of public performance, or by widening the definition of copying, such as the Engraving Copyright Acts of 1734 and 1767, which prohibited copying in whole or in part ‘by varying, adding to, or diminishing from the main design’.[26]
Moreover, as the scope of the statutory right broadened, judicial focus progressively turned away from what had been added to a work and began to concentrate on what had been taken from the original. Kaplan dates this transition from Longman v Winchester[27] in 1809, in which Lord Eldon LC first held that a work which was based on another but in which the author had made additions and corrections could nevertheless constitute an infringing copy. Lord Eldon LC ‘bore down on the fact that the defendant had availed himself of the plaintiff’s labor; he had not replowed the field.’[28] This shift in focus from creation to copying continued with West v Francis, where the court defined ‘copy’ as ‘that which comes so near to the original as to give every person seeing it the idea created by the original.’[29]
The courts’ reorientation in approach led to a new type of case coming for determination: one involving the appropriation and passing off of the prior author’s work (which might properly be described as ‘plagiarism’) rather than merely its reproduction in a derivative form (which is more appropriately labelled ‘piracy’). It was in this type of case that copyright was first employed to protect an abstract form of narrative. In 1856, the United States’ copyright legislation was amended to include an exclusive right of public performance in relation to a dramatic composition.[30] In 1868, Augustin Daly sought to take advantage of the amendment to protect a scene in his play, Under the Gaslight, which involved a character being tied to a railway track and escaping, at the last minute, the path of an oncoming train. The defendant sought to use a variant of the scene in his play, which was otherwise quite a different work. Though their basic premise was the same, the precise details of the scenes diverged, as did their dialogue. The court found for the plaintiff,[31] a decision which the defendant’s counsel described as ‘the first decision which has established a property in incident.’[32]
By the start of the 20th century, it was clear that copyright could no longer be limited to the precise words of an author’s work. With the introduction of the Copyright Act 1911 (UK) 1 & 2 Geo 5, c 46 (‘the 1911 Act’), the exclusive rights of the copyright holder in a literary work encompassed the right to ‘produce or reproduce the work or any substantial part thereof in any material form whatsoever’[33] and included the sole right to produce, reproduce, perform or publish any translation, dramatisation or novelisation of the work. In Corelli v Gray, Cozens-Hardy MR stated that the effect of the new Act was to ‘give protection not merely to the form of the words in a novel but to the situations contained in it.’[34] The following year, in Rees v Melville, the English Court of Appeal accepted that:
In order to constitute an infringement it was not necessary that the words of the dialogue should be the same, the situations and incidents, the mode in which the ideas were worked out and presented might constitute a material portion of the whole play, and the Court must have regard to the dramatic value and importance of what if anything was taken, even though the portion might in fact be small and the actual language not copied.[35]
It was in this way that copyright came to be extended from the paper on which a book was printed to the very story which it told.
Under the Act, copyright subsists in original literary and dramatic works.[36] A novel, play, or script would clearly fall within these terms, either by reason of the common law definition of literary work[37] or the definition of dramatic work in s 10(1) of the Act.[38] The copyright comprises a number of exclusive rights which include, relevantly, the right to reproduce the work in material form and the right to produce an adaptation of the work.[39] The term ‘material form’ is defined in s 10(1) of the Act to include ‘any form (whether visible or not) of storage from which the work or adaptation, or a substantial part of the work or adaptation, can be reproduced.’ Under the Act, it is an infringement to reproduce, in material form, the work or a substantial part of the work.[40] The Act deems the making of a sound recording or film of the work to be a reproduction of the work.[41]
In relation to literary and dramatic plots, it is important to note that copyright only attaches to works once they are embodied in material form,[42] and it is not an infringement to reproduce a work other than in material form.[43] It is clear, therefore, that a plot itself cannot have the protection of the Act, other than as it is embodied in a particular work. Some courts in the United States have attempted to dismiss actions for breach of copyright founded on the plot of a literary or dramatic work on the basis that a plot is a ‘mere idea’ and cannot be the subject of copyright.[44] This is to misconstrue both the nature of narrative and the proper application of one of copyright’s central tenets, the idea–expression distinction.[45] While this principle is not expressly set out in the Act,[46] it is a mantra often recited by courts, particularly in cases involving the protection of abstract subjects such as literary and dramatic plots. However, it is a fallacy to suggest that the plot of a literary work is somehow independent of the text and capable (or incapable) of protection apart from in the words by which it is expressed. Plot is an element of the work, embedded within and inseparable from the text itself; to copy the plot is to infringe the work.[47]
It is clear, moreover, that the plot of a novel or play can constitute a ‘substantial part’ of the work as a whole, and can found an action for infringement of the work if it is copied. This is a consequence of the broadening scope of copyright protection in the 18th and 19th centuries, and the recognition in cases such as Rees v Melville that scenes and incidents can constitute a ‘material portion’ of a
literary or dramatic work.[48] The ‘substantial part’ requirement derives from s 14 of the Act, which provides:
(1) In this Act, unless the contrary intention appears:
(a) a reference to the doing of an act in relation to a work or other subject-matter shall be read as including a reference to the doing of that act in relation to a substantial part of the work or other subject-matter; and
(b) a reference to a reproduction, adaptation or copy of a work shall be read as including a reference to a reproduction, adaptation or copy of a substantial part of the work, as the case may be.
Significantly, however, the notion of a ‘substantial part’ is not defined in the Act, and the Act provides no guidance as to how a court is to determine what constitutes a ‘substantial part’ of a work. The case law only indicates that what is ‘substantial’ in any given case is a question of fact to be determined having regard to all the circumstances.[49]
It does appear to be well established, in relation to literary and dramatic works at least,[50] that substantiality is to be decided primarily by reference to the quality of the part allegedly taken, and that material which is unoriginal is of less value in this regard than the original aspects of the work. Various decisions demonstrate the character of this standard. In Rees v Melville, substantiality was decided by reference to the ‘dramatic value and importance’[51] of the part taken, while in Hawkes & Son (London) Ltd v Paramount Film Service Ltd, 20 seconds of a four-minute piece of music were considered to be a ‘substantial, a vital, and an essential part’ of the work because ‘[a]ny one hearing it would know that it was [the plaintiff’s piece]’.[52]
In Ladbroke (Football) Ltd v William Hill (Football) Ltd,[53] Lord Pearce indicated that originality will usually be taken by the courts to be an indication, for this purpose, of quality:[54] ‘Whether a part is substantial must be decided by its quality rather than its quantity. The reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright’.[55] This principle has been recently reasserted by the High Court in the context of computer programs. In Autodesk Inc v Dyason (No 2), Mason CJ, although in dissent, quoted Lord Pearce’s statement in Ladbroke and commented: ‘in the context of copyright law, where emphasis is to be placed upon the “originality” of the work’s expression, the essential or material features of a work should be ascertained by considering the originality of the part allegedly taken.’[56] In Data Access Corporation v Powerflex Services Pty Ltd, a majority of the High Court indicated that they preferred and adopted Mason CJ’s view.[57]
The notion of originality for the purpose of determining whether a ‘substantial part’ of a work has been taken must be distinguished from the requirement in s 32(1) of the Act that, to be capable of being the subject of copyright, a literary or dramatic work must be ‘original’. The requirement for originality in the latter context was first made explicit in the 1911 Act, which specified that copyright only subsists in ‘original’ literary works.[58] However, in University of London Press, Peterson J indicated that this requirement only meant that ‘the work must not be copied from another work — that it should originate from the author.’[59] He stated: ‘The word “original” does not in this connection mean that the work must be the expression of original or inventive thought. Copyright Acts are not concerned with the originality of ideas, but with the expression of thought’.[60] In Sands & McDougall Pty Ltd v Robinson, the High Court specifically rejected an argument that the 1911 Act had effected a change in the pre-existing law by imposing a requirement for originality ‘in an inventive sense’.[61] This view has been followed consistently both in Australia and in the United Kingdom.[62]
The Australian position can be contrasted with that in the United States where courts have held that there is a creative or aesthetic element to the originality required for subsistence of copyright.[63] In Feist, the United States Supreme Court declared: ‘Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.’[64] This latter view was rejected by Finkelstein J in Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd.[65] After an extensive review of the Australian, English, United States and Canadian authorities, his Honour held that, by the time the 1911 Act had been introduced, ‘it was apparent that a work could be original in the absence of creativity.’[66]
While it is clear that the quality of what has been taken will normally dominate in determining whether what has been taken represents a ‘substantial part’ of the work as a whole, it should be noted that courts in Australia have employed additional tests to answer this question in relation to certain types of copying and, in particular, where the copying involves ‘subject-matter other than works’ protected by part IV of the Act.[67] In relation to part IV copyright, where the content of the material in question is not the subject of protection, and where it would therefore be futile to determine substantiality primarily by reference to quality,[68] courts have instead looked to the quantity of material reproduced, and have utilised factors such as the harm caused to the copyright owner’s commercial interests, the interest protected by the particular type of copyright, and the object or purpose of the alleged infringer in undertaking the copying, to resolve the question of substantiality.[69]
While these qualifications do not apply to the test of substantiality in relation to literary or dramatic works,[70] another variation to the test of substantiality which does appear to be well established in relation to those types of work concerns ‘copying for objects or purposes of parody’.[71] In AGL Sydney Ltd v Shortland County Council, Foster J noted:
A statement of principle which appears to have won general acceptance is that of Younger J in Glyn v Weston Feature Film Co [1916] 1 Ch 261 at 268, namely: ‘that no infringement of the plaintiff’s rights takes place where a defendant has bestowed such mental labour upon what he has taken and has subjected it to such revision and alteration as to produce an original result.’[72]
There are parallels between this exception to a finding of substantiality and the notion of ‘transformative use’,[73] which has developed in relation to the statutory defence of ‘fair use’ in the United States.[74] In Campbell v Acuff-Rose Music Inc, the United States Supreme Court held that a parody may constitute fair use under the Copyright Act of 1976,[75] and that central to such a finding was the question whether the work ‘adds something new, with a further purpose or different character’.[76] In Suntrust Bank v Houghton Mifflin Co,[77] the defence of fair use for purposes of parody was pleaded in response to an allegation of copyright infringement involving a ‘retelling’ of Margaret Mitchell’s novel, Gone with the Wind, called The Wind Done Gone.[78] The work, in part, retold Mitchell’s Civil War saga from the point of view of an illegitimate black slave, the half-sister to Mitchell’s heroine, Scarlet O’Hara. Pannell J found that the new work did have ‘transformative’ characteristics, but that they were outweighed by the other factors which are to be considered in any assessment of fair use under the Copyright Act of 1976.[79] It is submitted that an Australian court would also find that such a work fell within the ‘original result’ exception of Glyn v Weston Feature Film Co[80] and TCN Channel Nine v Network Ten.[81]
To the extent that these qualifications or variations to the test of substantiality expounded in Ladbroke[82] can be said to apply to cases which involve literary or dramatic plots — for example, where the plot in question can be said to be a parody of an existing work, as in Suntrust Bank — there is no reason that the courts should not also modify the test as it operates in relation to those cases. However, at the heart of any determination of substantiality is a comparison of the two works in dispute — and this is particularly so where the allegations of copying concern literary and dramatic plots. Although exceptions such as the ‘original work’ qualification in relation to parody may operate to influence the ultimate determination of infringement, they do not assist in making that comparison, which must be the starting point of any assessment of copying. In this respect there is an absence in the law which, in relation to literary and dramatic plots, is particularly acute.
Indeed, there is a particular difficulty in determining whether enough of a plot has been taken to constitute a ‘substantial part’ of the work as a whole because of the inherently abstract nature of narrative. While, as discussed, this has led some courts to invoke the idea–expression distinction to hold that copyright cannot inhere in such abstract subject matter, it is more appropriate to see the role of the idea–expression distinction in this context, as an indicator of the outer limits of infringement. Its use for this purpose was famously outlined by Learned Hand J in Nichols v Universal Picture Corporation, in what has come to be known as the ‘abstractions’ test:
Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out ... but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his ‘ideas’, to which, apart from their expression, his property is never extended. Nobody has ever been able to fix that boundary, and nobody ever can.[83]
Benjamin Kaplan’s is perhaps typical of the critical attitude towards the ‘abstractions’ test: ‘Hand’s explanation does, I think, sharpen our awareness of what we are about, but surely the technique described lacks precision.’[84]
Indeed, if there is a common theme to judicial responses to the task of determining whether a ‘substantial part’ of a work has been taken, it is a recognition of the lack of precision involved. Learned Hand J has said of the line between substantial and insubstantial copying, ‘wherever it is drawn, [it] will seem arbitrary’.[85] In TCN Channel Nine v Network Ten,[86] Conti J of the Federal Court quoted ‘the imponderable observation’ by Professor Cornish that ‘[t]he answer in a particular case can only lie in the Tribunal’s sense of fairness’.[87] If this uncertainty is seen as inevitable by the courts, however, it is because they regard it as a necessary concession to ensure that the test for copyright infringement is not so narrowly defined as to exclude cases of true plagiarism. Learned Hand J,
who more than any other jurist was responsible for the elucidation of the law in this area, has outlined the quandary faced by decision-makers:
It is of course essential to any protection of literary property ... that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large ...[88]
Zechariah Chafee has summarised the issue succinctly: ‘[I]f we protect more than precise words, where shall we stop?’[89]
By far the majority of the litigation involving the protection of literary and dramatic plots occurs in the United States. Its cinematic,[90] literary and dramatic output, combined with its population and the sheer volume of its litigation is such that it should be unsurprising that its jurisprudence in this area is considerable. In the United States, as in Australia, copyright is a creature of federal legislation,[91] and the test for infringement revolves around establishing that there is a ‘substantial similarity’ between the plaintiff’s and the defendant’s work.[92] While this test is framed in slightly different terms from the requirement under s 14 of the Australian Act, it is submitted that, in practice, it results in the same enquiry being undertaken.[93] As such, American jurisprudence provides a useful point of comparison in analysing how courts go about comparing plots for the purpose of determining an action for breach of copyright.
There are, broadly, two different approaches taken by courts in the United States when comparing plots in the context of a copyright infringement action, depending on the courts’ view as to the proper role of the idea–expression distinction, and the concept of originality. The first is an holistic assessment which looks at the level of similarity between the two works, adjusting the standard required to establish ‘substantiality’ depending on the originality of the plaintiff’s work; the second is a more fragmented approach which discards the uncopyrightable elements of the plaintiff’s work before determining whether what has allegedly been taken by the defendant is substantially similar to the plaintiff’s work. The second of these approaches is based on the notion that copyright does not extend to ideas or unoriginal material, and so ‘basic plots’[94] or unoriginal elements of narrative should be discarded in determining cases of copyright infringement.
Professor Melville Nimmer is perhaps the leading advocate for the first of these approaches. Professor Nimmer distinguishes between what he terms ‘fragmented literal similarity’ and ‘comprehensive nonliteral similarity’ to describe two different types of infringement which he believes require separate analysis.[95] As the terms suggest, ‘fragmented literal similarity’ refers to identical or near-identical copying which does not occur in a comprehensive way throughout the defendant’s work, while ‘comprehensive nonliteral similarity’ refers to the inverse — non-identical copying where ‘the fundamental essence or structure of one work is duplicated in another’.[96] Actions for breach of copyright in relation to literary and dramatic plots will necessarily involve the latter. Nimmer and Nimmer note that the measure of how substantial a ‘substantial similarity’ must be will vary according to the circumstances, and that ‘more similarity is required where less protectable matter is at issue’.[97] This accords with the approach of the Court of Appeals for the Ninth Circuit in Apple Computer Inc v Microsoft Corporation: ‘When the range of protectable and unauthorized expression is narrow, the appropriate standard for illicit copying is virtual identity.’[98]
As this decision illustrates, the variable standard is influenced both by the originality of the plaintiff’s work and the extent to which what has been copied from it can be described as ‘mere ideas’. According to Nimmer and Nimmer, the idea–expression distinction is ‘more appropriately analyzed’[99] in relation to infringement and the question of substantiality than in relation to the subsistence of copyright, and the distinction ‘constitutes not so much a limitation on the copyrightability of works, as it is a measure of the degree of similarity which must exist between a copyrightable work and an unauthorised copy’.[100] Likewise, the originality of the work will also influence the level of similarity required to establish infringement, rather than acting as a bar to subsistence: ‘If the only original aspect of a work lies in its literal expression, then only a very close similarity, verging on the identical, will suffice to constitute an infringing copy.’[101]
Moreover, because this approach requires an holistic assessment, the plots of the two works can be compared by reference to (roughly) similar criteria. Nimmer and Nimmer cite Zechariah Chafee’s ‘pattern test’: ‘I like to say that the protection covers the “pattern” of the work[,] ... the sequence of events, and the development of the interplay of the characters’.[102] The importance of analysing the plots of the two works in an holistic way has also been recognised by the courts: ‘A story has a linear dimension: it begins, continues, and ends. If a defendant copies substantial portions of the plaintiff’s sequence of events, he does not escape infringement by adding original episodes somewhere along the line.’[103]
The second broad approach to comparing plots involves identifying and disregarding those elements of the plaintiff’s work which are incapable of being the subject of copyright, either because they represent ‘mere ideas’ or because they are not original. This approach is problematic because it involves dissecting the plaintiff’s work into its copyrightable and non-copyrightable elements — an exercise that could rarely be conducted with any degree of clarity.[104] Nevertheless, the US Supreme Court has emphasised that such an approach is warranted where a work contains elements that would not, ordinarily, be the subject of copyright:
The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author.[105]
The notion that unoriginal elements can be identified and discarded is reflected in the development of the doctrine of scènes à faire.[106] This concept was imported from 19th century French drama by Yankwich J in Cain v Universal Pictures Co,[107] who declared, in a comparison of two works in which lovers shelter from a storm in a church loft, that the details common to each, such as playing the piano, prayer and hunger, were inherent in the situation itself and not sufficiently original to be the subject of copyright. He later wrote, ‘the French refer to them as scènes à faire — that is, scenes which must follow a certain situation.’[108] In Reyher v Children’s Television Workshop, the doctrine was linked explicitly to the idea–expression distinction when the court stated that scènes à faire represent ‘similarity of expression ... which necessarily results from the fact that the common idea is only capable of expression in more or less stereotyped form’.[109]
Most commonly, the scènes à faire doctrine is employed to dismiss ‘that obsessive conviction, so frequent among authors and composers, that all similarities between their works and any others which appear later must inevitably be ascribed to plagiarism.’[110] While it is true that the doctrine has assisted courts in the United States to dismiss claims based on a loose collection of similarities,[111] the fragmented nature of the analysis to be conducted and the relatively trivial details to be considered have tended to lead courts to focus on the copyrightability of the points of similarity, rather than the similarity of the works as a whole. The dangers of such an approach have been noted in Hoehling v Universal City Studios Inc: ‘By factoring out similarities based on non-copyrightable elements, a court runs the risk of overlooking wholesale usurpation of a prior author’s expression.’[112] Indeed, the Court of Appeals for the 11th Circuit has recognised that lists of similarities between two works are ‘“inherently subjective and unreliable,” particularly where the list contains random similarities, and many such similarities could be found in very dissimilar works.’[113]
Fundamentally, factoring out ‘uncopyrightable elements’ in this way involves applying principles that properly operate in relation to the subsistence of copyright to determine the issue of copyright infringement. It is submitted that this approach is both misleading and unnecessary, if not actually wrong in law. It is not the plot of a literary or dramatic work which is the subject of copyright, but the work itself; nor can the plot be somehow severed from the work in which it is embedded. To apply the idea–expression distinction or a qualitative notion of originality to exclude a plot from an action for breach of copyright simply because it is abstract or unoriginal is to misapply basic principles of copyright law.[114] Moreover, it is clear that those doctrines which have been applied to deny an action on the basis of subsistence of copyright can be more adequately and more appropriately viewed as influencing the level of similarity required to establish infringement. The latter method, it is submitted, more accurately reflects both the true position at law and the abstract nature of narrative.
Reported Australian cases of breach of copyright involving literary or dramatic plots have, to date, been relatively rare.[115] The reason for this appears to be that, as in the United States, the majority of the decisions are made at an interlocutory stage and do not proceed to final hearing.[116] However, those decisions that are reported tend to support the proposition that courts in Australia have generally preferred approaching the comparison of plots from a perspective closer to Professor Nimmer’s ‘level of similarity’ method, though one which clearly recognises the inherently subjective nature of the task.[117] The leading authority in this country is Zeccola (First Instance), itself an interlocutory hearing, though one which Gray J acknowledged to have ‘rapidly developed into a proceeding more akin to the final hearing of the action.’[118] Zeccola (First Instance) is unusual, moreover, because it was the subject of an appeal to the Full Court of the Federal Court, which handed down a judgment some two months after the decision at first instance upholding the decision of the trial judge and dismissing the appeal.[119] Between the two decisions, therefore, a number of important principles have been addressed by Australian courts.
The decision at first instance concerned an application for the grant of interlocutory injunctions restraining the respondents from showing an Italian film called Great White, which the plaintiff alleged to be an infringement of its copyright in the book, screenplay and film called Jaws. The application before Gray J was only one of a series of applications in almost a dozen countries attempting to stop the public exhibition of Great White. The central issue in the case was whether Great White had, in effect, copied the plot of Jaws[120] by reproducing a substantial part of the book, screenplay or film for the purposes of ss 14(1) and 31(1)(a) of the Act. After outlining the basic test to be applied in
applications for interlocutory relief, his Honour described the principles of copyright which need to be satisfied in order to establish infringement:
It is well established that the plaintiff must show a sufficient objective similarity between the two films and also some subjective causal connection between them. I proceed upon the basis that the plaintiff must show that the film is a substantial copy of Jaws and that this result was intended by those responsible for making the film. Both aspects are questions of fact.[121]
In comparing the two films, however, his Honour was seemingly at pains to emphasise the extent to which that question of fact was one of impression alone, and that it was an issue on which the available authorities provided little assistance: ‘Ultimately the matter comes down to the subjective impression of the Judge who makes the comparison. Are the two films merely similar or is one a copy of the other?’[122] Later in his judgment, after discussing the submissions of both parties, his Honour returned to the notion of a ‘subjective impression’ and clearly indicated that it was, in his own mind, one of the primary reasons for his decision: ‘Having considered the rival submissions carefully I am still left with the very decided impression that I formed after the showing of the film, namely that the film is a substantial copy of Jaws.’[123]
What is most interesting to note about the way in which Gray J conducted the comparison of the two plots, however, is the extent to which he employed methods and terms which are consistent with, if not derived from, the ‘level of similarity’ approach in the United States. Indeed, at several points in his judgment at first instance, Gray J rejected arguments and submissions which were more in line with the approach which factors out ‘uncopyrightable elements’. It is clear from his discussion that Gray J conducted his analysis in an holistic way, by reference to certain basic narrative characteristics which he applied to each work. Indeed, his Honour rejected the attempt of both sides to identify lists of similarities and differences, stating: ‘No doubt a good deal can be said on both sides of the question. It all depends upon where the emphasis is laid.’[124]
After analysing the plot, characters, and narrative techniques used in each work, Gray J concluded that:
Practically all the principal situations and characters in Jaws are faithfully reproduced ... the same stretch of coastline in the same country is reproduced as the location. ... Then, one after the other, easily recognisable characters appear and recognisable incidents occur.[125]
His Honour found that there was a strong inference of copying and indicated he was ‘quite satisfied that the plaintiff has an excellent chance at the trial of proving an infringement of its copyright in Jaws and in the book and screenplay’.[126]
On appeal, the Full Court addressed a number of the submissions which were put by the appellants, presumably in reliance upon parallel United States principles and authority. In particular, the appellants sought to put to the Full Court that the trial judge was in error in failing to apply, in effect, the ‘factoring out of uncopyrightable expression’ approach:
It was submitted that copyright in a film subsists only in those parts of the film capable of being the subject-matter of copyright, that is, having the requisite character of originality, and that it is necessary to excise other parts from the whole. It was said that it is only the residue that can be the subject of copyright and thereby be protected from infringement.[127]
The Full Court seemed to reject that submission, stating: ‘The difficulties involved in severing films into parts which are capable of characterization as original works and other parts that are not is obvious.’[128] The Full Court also seemed to affirm the holistic approach taken by the trial judge:
No doubt numerous factors, including differences of sequence and of dialogue, aspects of idea or theme which lack originality and various other matters were all properly to be considered, at least subconsciously, but only as part of a process of forming an overall impression.[129]
The Court then proceeded to outline its own view of the proper way in which to approach the comparison and, in particular, the proper role of originality. It accepted that the idea–expression distinction applied to the central idea or theme of a story or play, and that copyright subsists in ‘the combination of situations, events and scenes which constitute the particular working out of the expression of the idea or theme’,[130] a statement which echoes Chafee’s ‘pattern test’.[131] It also accepted that an arrangement of scenes which, themselves, are commonplace, may nevertheless constitute the expression of an idea, but that where a claim for infringement is made it must ‘be confined closely to the story which has been composed by the author.’[132] This seeming acceptance that a lack of originality goes to the level of similarity at which infringement will be established is supported by the authority of Wills J’s decision almost a century earlier in Kenrick v Lawrence:
It may be also that even the coarsest, or the most commonplace, or the most mechanical representation of the commonest object is so far protected ... But in such a case it must surely be nothing short of an exact literal reproduction ... that can constitute [an] infringement, for there seems to me to be in such a case nothing else that is not the common property of all the world.[133]
The only aspect of the Full Court’s decision which is inconsistent with the ‘level of similarity’ approach is its statement immediately following the passage quoted above that ‘[i]f a literary or dramatic work is not wholly original there is no copyright in the unoriginal part so as to prevent its use.’[134] Here some of the ‘factoring out of non-copyrightable elements approach’ appears to have seeped into the Full Court’s reasoning. This sentence, it is submitted, is inconsistent with the principles immediately preceding it, and indeed with the rest of the judgment of the Full Court which is otherwise plain in its support of the ‘level of similarity’ approach. It suffers the same deficiency as the statement of the US Supreme Court in Feist,[135] by purporting to apply a doctrine which properly operates in relation to the subsistence of copyright to determine a question of copyright infringement.
Indeed, the logical absurdity of the statement is made readily apparent when one attempts to conjure up a ‘wholly original’ literary or dramatic work. In Emerson v Davies, Story J opined:
In truth, in 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 ... borrows, and must necessarily borrow, and use much of what was well known and used before.[136]
The question is not whether copyright is available, but rather whether what has been created is an actionable copy. As Chafee has said: ‘Even the first user of a plot or human situation should not have a monopoly of it. ... [Yet t]here comes a point where the use of material is so close as not to give the public anything really new.’[137] The purpose of the court’s inquiry is to try and determine at what point that line has been crossed. As the Zeccola litigation demonstrates, the difficulty is that, as it stands, the law provides few, if any, methodological tools with which to do so.
One of the most striking aspects of Gray J’s decision in Zeccola (First Instance) is the extent to which his Honour relied on his own ‘subjective impression’ to form a judgment about the extent of the similarity between the works in issue. His Honour concluded that the plaintiff had an ‘excellent chance at trial of proving an infringement of its copyright’ based primarily on his ‘very decided impression’ that the defendant’s work was a ‘substantial copy’ of the plaintiff’s novel, screenplay or film.[138] On appeal, however, the Full Court reached a far more hesitant conclusion. Though they conducted the same exercise in comparison by viewing the two films at the centre of the dispute, and indeed upheld his Honour’s finding of substantial similarity, their opinion on the issue was much more ambivalent than that expressed by the judge at first instance: ‘While our own viewing of the films did not instill in us the same degree of conviction that his Honour felt, we are not persuaded that his Honour was wrong.’[139]
The difference in conviction between the two judgments can at least partially be explained by reference to the lack of objective criteria against which the judges could make their comparisons. While Gray J did analyse the various works by reference to certain identifiable literary characteristics — plot, character, narrative techniques — he neither defined what he meant by those terms nor explained why he utilised those aspects rather than, for example, the language used in the works, or their themes, to determine the ‘substantial part’ question. His Honour correctly described the issue of similarity as a question of fact, yet the test of substantiality — involving, as it does, an assessment of degrees or levels of similarity, as well as the relative originality of the copyrighted work — necessarily requires the judge to assess the importance of the part allegedly taken, and this cannot be done unless he or she can identify the essential or material aspects of the work. If the law provides no guidance as to how this should be done, it is legitimate to turn to external theory for assistance.
In University of London Press, Peterson J identified a much-quoted ‘rough practical test’ to determine what constitutes a ‘substantial part’ of a copyrighted work: ‘What is worth copying is prima facie worth protecting.’[140] The value of narrative, in this regard, cannot be disputed. Particularly in the film industry, the economic value of a commercially successful storyline far surpasses its embodiment in a particular literary or dramatic work. The motion picture mogul Samuel Goldwyn has said: ‘A great picture has to start with a great story. Just as water can’t rise higher than its source, so a picture can’t rise higher than its story.’[141] Yet there seems to be agreement among industry ‘insiders’ that it is not the dialogue, style, or language of the work which is valuable:
What a director really looks for in a literary work is the general skeleton of the action. He can fill in all the dialogue, he can recreate all the settings, and he can reproduce the emotion and excitement. Given a good basic story, a director can produce a motion picture, a television program, or a stage play.[142]
The interrelationship between the notions of similarity and substantiality suggests that, if possible, criteria should be used in assessing the former which also bear significance for the latter enquiry. If it is the underlying structure of a given narrative which is usually of most value to an infringer, therefore, it is important for courts to be able to conduct comparisons using methods and terminology which take that structure as their subject. It is submitted that the methods of literary theory, in particular those deriving from the critical movement known as ‘structuralism’, are most aptly suited to that task. The basic principles of that movement are outlined below.
Structuralism is a critical methodology which attempts to examine and explain particular phenomena by reference to their underlying system. It assumes the existence of systems at every level of human life and represents an attempt to describe the structure of those systems: ‘[T]he perception of order or structure where only undifferentiated phenomena had seemed to exist before is the distinguishing characteristic of structuralist thought.’[143] Structuralism has influenced a variety of disciplines, such as anthropology, philosophy, psychology, history, and even the physical sciences, but was born primarily of linguistics and, in particular, from the work of the Swiss linguist Ferdinand de Saussure.
In his Course in General Linguistics,[144] Saussure distinguished between two approaches to the study of language, which he termed synchronic and diachronic: synchronic analysis is structural and involves studying the language system as it exists at a particular point in time; diachronic analysis is historical and involves exploring the way in which individual aspects of the system have changed over time.[145] This distinction differentiated structuralism from all other branches of linguistics (and, indeed, of literary theory), which until then had been based upon etymological studies of words or phrases. Structuralism enabled units of language to be compared with each other by reference to their place within the language system, by looking at their form to determine their meaning.
Saussure described the basic unit of language as the sign, and stated that each sign consists of a signifier (signifiant) and a signified (signifié). The signifier is the word we hear or read — what we actually experience in communication. The signified is the image, the idea that is created in our minds when we hear or read that word — the conception that we link to a particular sound or arrangement of letters.[146] Saussure insisted that the relationship between the signifier and the signified is arbitrary; there is no necessary connection between the word ‘tree’ and the organism we identify as a tree, and this is demonstrated by the way different languages use different words to denote the same object (arbre). By breaking language up in this way, Saussure revealed the ‘basic conceptual tools of structural analysis’.[147]
It is the notion of taking a cross-section of a system, of looking at it both in terms of its characteristics and its arrangement, which makes structuralist methodology ideally suited to qualitative analysis of abstract subjects. Saussure noted that every system is composed of signs, not just language: ‘Language is a system of signs that express ideas, and is therefore comparable to a system of writing, the alphabet of deaf-mutes, symbolic rites, polite formulas, military signals, etc. But it is the most important of all these systems.’[148] Structuralist methodology has subsequently been employed to analyse a variety of other systems, such as myth[149] and fashion.[150] In relation to narrative, however, it has most effectively been explored by the critical school known as ‘Russian formalism’.
The Russian formalists were a group of critical theorists writing in the 1920s who attempted to provide a theoretical basis for the emerging Russian avant-garde art. Perhaps the most influential figure behind the critical methodology which came to be known as formalism was Vladimir Propp. In his Morphology of the Folktale,[151] Propp applied structuralist methods to the analysis of 100 Russian folk tales. In doing so, he discovered that, though the personages of the tales were variable, their roles in the tales were constant and limited. Propp also noted that the sequence of events in each tale always consisted of a fixed number of functions. He defined function as ‘an act of a character, defined from the point of view of its significance for the course of the action’.[152] From these observations, Propp developed four laws which applied to each of the fairytales he studied:
Propp discerned eight character roles (for example, ‘the hero’, ‘the helper’, ‘the donor’) and a total of 31 functions (for example, ‘a difficult task is proposed to the hero’) some or most (though never all) of which recurred in each tale he studied. The primary significance of Propp’s analysis lay in the techniques he used to determine the underlying structure of the tales. Traditional analyses of folk tales classified them according to their principal characters — distinguishing between tales which featured ogres, animals, magical figures and so on.[154] Propp demonstrated that different characters in different tales could perform the same function, and that two stories could have the same dramatic structure even though their details varied.[155] Thus ‘St George kills the dragon’ could have the same function as ‘Theseus traps the minotaur’, if that function is described as ‘the hero triumphs over the villain’. Conversely, the same act could have different functions in different tales — ‘St George kills the dragon’ could represent the hero’s triumph, or it could represent a function such as ‘the helper is slain’ if the dragon was friendly and was to aid in the hero’s escape.
This notion of roles and functions constituting the essence of narrative is central to the formalist analysis of plot. The formalists also recognised, however, that dramatic structure and plot are not identical, and that two narratives with the same structure can nevertheless have different plots, depending on how the narrative is arranged. The way in which they expressed this concept was to distinguish between plot (syuzhet) and story (fabula). The two most eloquent proponents of this distinction were Viktor Shklovsky and Sergei Eisenstein, and it is significant that both were influential film theorists. Indeed, Eisenstein was also a director, and argued that ‘these categories ... lose their strangeness when reformulated in cinematographic terms’.[156] In formalism, ‘story’ represents the chronological sequence of events, while ‘plot’ constitutes the arrangement of scenes, or the narrative as actually told.[157] A story might be: ‘The guests arrived. The butler killed one of them. An investigation was conducted. The butler was revealed.’ However, this is hardly the plot of a detective novel. Thus the act of ‘reading’ a text involves witnessing the ‘plot’ to construct a mental ‘story’. This separation of narrative technique from the sequence of events provided another means by which two narratives could be compared at the level of form.
A final distinction which can be appropriated from structuralism is the difference between semantic and syntactic approaches to narrative. This dichotomy was developed by another of the Russian formalists, Tzvetan Todorov, in relation to film genre. While film is not alone in its division into genres which share similar elements and conventions, it is perhaps the most consistent and coherent medium where such a division has taken place. It is therefore uniquely suited to structural analysis, and the work of structuralists such as Saussure, Lévi-Strauss, Propp and Todorov stands behind much contemporary film theory. The distinction between semantic and syntactic approaches to genre has been described by Rick Altman:
[W]e can as a whole distinguish between generic definitions that depend on a list of common traits, attitudes, characters, shots, locations, sets and the like — thus stressing the semantic elements which make up the genre — and definitions which play up instead certain constitutive relationships between undesignated and variable placeholders — relationships which might be called the genre’s fundamental syntax. The semantic approach stresses the genre’s building blocks, while the syntactic view privileges the structures into which they are arranged.[158]
Rather than viewing the two approaches as competing, however, Altman suggests they are complementary: ‘By simultaneously accepting semantic and syntactic notions of genre we avail ourselves of a possible way to deal critically with differing levels of “genericity”’.[159] This method has significance for the analysis of narrative in a number of different respects. At the level of the individual narrative, it is possible to see the analysis of Propp and the formalists as comprising a fundamentally ‘syntactic’ view of plot, which is incomplete without a ‘semantic’ comparison. Thus, two texts which have structural similarities (sequence of events, functions of characters) may in some circumstances possess semantic differences (setting, dialogue, pace or language) which make each text original and distinct. More significantly, a semantic/syntactic approach can be used to distinguish the original elements of a text from those which merely flow from the conventions of its genre. In this way, the relative originality of the work can be ascertained by reference to its ‘genericity’.
These basic concepts — functions, roles, plot and story, and semantic and syntactic approaches to narrative — constitute the (simplified) essence of formalist methodology, and its utility for the analysis of narrative has proven remarkably resilient to criticism. Moreover, its influence has transcended the cultural and critical climate in which it originated, leading Robert Scholes to note that ‘instead of representing a mere episode in the history of taste, [formalism] has continued to flourish at the heart of the structuralist movement’.[160]
In determining cases of copyright infringement where the subject of the breach is the plot of a literary or dramatic work, courts have often employed well-known narrative characteristics to compare the works in question, with a view to making an assessment about the overall similarity between them. A number of courts and commentators have attempted to identify those narrative elements they consider to be essential in this regard. Zecharaiah Chafee has nominated ‘the sequence of events and the development of the interplay of the characters,’ which he describes as ‘the “pattern” of the work’.[161] In Grove Press Inc v Greenleaf Publishing Co, a New York District Court stated: ‘The essence of a novel or any other story for that matter, is the plot, plan, arrangement, characters and dialogue therein contained’.[162] In Zeccola (First Instance), Gray J compared the sequence of events, the roles of the characters, narrative techniques, setting and even the ‘fact situation in which a fish terrorises a land-based community’[163] in deciding that there was infringement.
The difficulty of this analysis, however, is that it is largely ad hoc and based solely on those characteristics which the judge or critic considers to be essential. More significantly, the characteristics which critics such as Chafee have identified, and which Gray J and others in the United States have purported to analyse, are not in any sense legal characteristics, but merely derive from the individual’s experience of the way in which narrative operates. Given the uncertainty which surrounds the application of the law in this area, and the potential for inconsistency which flows from it, it is perhaps surprising that few attempts have been made to utilise external theory to define these notions — particularly as they are, after all, technical concepts.
In the United States, there has been a practical impediment to the influence of external theory on copyright law deriving from the rigidity of the ‘ordinary observer’ test, which specifies that expert testimony cannot be employed in comparing two plots for the purposes of determining substantial similarity.[164] This is not, however, the position under Australian law. Section 79 of the Evidence Act 1995 (Cth) permits expert evidence to ‘prove the existence of a fact about the existence of which the opinion was expressed’.[165] In Zeccola (First Instance), Gray J was of the opinion that expert evidence which purported to give an opinion on ‘the question of copying’ was inadmissible, except to the extent that it identified factual similarities and dissimilarities.[166] This appears to have been an expression of the ‘ultimate issue rule’, which has subsequently been abolished.[167] There is no impediment, therefore, to the judiciary in Australia taking note of, and incorporating, developments in literary theory to assist them in determining the question of similarity, or in identifying the ‘essential’ or ‘material’ aspects of a literary or dramatic work.[168]
It should be noted that some critics have already attempted to adapt terminology from literary theory for this purpose. Robert Yale Libott, for example, employs a term from the Russian actor and dramaturge, Konstantin Stanislavski, called the ‘spine’, which Libott describes as ‘the continuing directional force or structure to which each of the sub (or sub-sub) components is connected, and from which they radiate.’[169] Robert Fuller Fleming also uses literary studies to confirm his definition of plot as ‘the entire sequence of events which lead the story situation from cause to effect.’[170] The problem with these attempts, however, is that in the absence of a systematic method of comparison they simply represent a more specific form of category to be compared, and do not provide the kind of holistic analysis which can be used to determine both similarity and substantiality.
Nevertheless, it must also be acknowledged that focusing on theory can distract from the legal questions to be answered, and has the potential for misapplication. The doctrine of scènes à faire, for instance, which is derived from French literary criticism, has arguably led courts in the United States to apply concepts more appropriately analysed in relation to the subsistence of copyright to determine the issue of copyright infringement. A notion akin to the scènes à faire doctrine is reflected in Rick Altman’s concept of a semantic approach to genre and, if it is to be used, it should more appropriately be viewed as a mechanism for distinguishing the original from generic aspects of a work for the purpose of determining substantiality. Similarly, some judges have employed the oft-quoted idea that there are only a limited number of story situations to dismiss actions for breach of copyright involving literary or dramatic plots. Georges Polti, quoting Goethe, has declared that there are only 36 dramatic situations,[171] and at least one judge has utilised this concept to deny protection to a plot on the basis that it is not sufficiently original.[172] It seems clear, however, that to apply such simplistic concepts to the issue of copyright infringement is only to be distracted from the court’s proper function of determining whether there has been copying of a substantial part of the work.
Given these dangers, it is perhaps questionable why the courts should be concerned to reformulate their approach to incorporate the methods and terminology of structuralism. There are, it is submitted, three broad rationales for the change. First, it is trite to observe that one of the fundamental characteristics of the rule of law is certainty, and that, by resiling from the application of objective criteria in determining the issue of infringement, the law is open to the criticism that it is arbitrary or inconsistent.[173] As Nimmer and Nimmer state, a clear methodology ‘offers a guide to decision that avoids the abandonment of reasoned analysis implicit in the conclusion that nothing more can be said than that each case turns on its own facts’.[174] Second, the law in this area is complex and contains many concepts and terms which are readily misinterpreted — as an examination of the case law demonstrates. The concepts of originality and the idea–expression distinction are perhaps the most obvious examples in this regard. In these circumstances, consistency of method becomes vital to ensure consistency of outcome. Finally, the parallels between the requirements of the law and the nature of structuralist theory are so striking that the temptation to bring them together should not be resisted simply because, in general, they do not intersect. As Martha Woodmansee and Peter Jaszi have said: ‘Here at least, law and literature have much to say to one another, and there is an urgent need for discussion.’[175]
By utilising the techniques of structuralism, therefore, it is possible to develop a matrix of analysis within which the characteristics of a story can be plotted, and comparisons between narratives undertaken. In considering how this analysis would function, it is perhaps useful to think of it as occurring across a number of different planes. The first would assess the dramatic structure of the work by analysing its roles and functions. The second would look at narrative arrangement by distinguishing between plot and story. Finally, the third would step back from that syntactic assessment, which represents a two-dimensional cross-section of the work, and examine its semantic characteristics — the work’s setting, style, tone and dialogue. This method, while not defining a clear border between permissible borrowing and infringement, nevertheless provides a more coherent and comprehensive framework within which comparisons of narratives can be conducted. Moreover, it is a method which takes account of narrative’s fundamentally abstract nature as well as its essential characteristics.
How, then, would such a reconfigured test work in practice? The first stage of the analysis would be to determine the dramatic structure of the work by describing the sequence of events and roles of the characters. This would involve an assessment of the appropriate level of abstraction, which would in turn require evidence about the relative originality of the copyrighted work. Professor Nimmer has outlined how this determination might be conducted, using the example of Nichols v Universal Pictures Corporation,[176] the celebrated decision in which Learned Hand J first outlined the ‘abstractions’ test. The case was brought by the author of a play entitled Abbie’s Irish Rose who asserted her copyright had been infringed by the defendant’s film, The Cohens and the Kellys. After examining the two works, however, the Court held that ‘[t]he only matter common to the two is a quarrel between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation.’[177]
Nimmer and Nimmer note that no more had been taken from Abbie’s Irish Rose than the notion of ‘a romance between two hostile families’ and that in this respect (and this respect alone) the play is similar to Romeo and Juliet. There could be no finding of substantiality in relation to that similarity, however, because it is at such an abstract level that it can properly be characterised as an ‘idea’ only. Nimmer and Nimmer then compare the plot of Romeo and Juliet with that of West Side Story, a musical which involves ‘a romance between members of two warring juvenile gangs in contemporary New York City’.[178] Based on Chafee’s ‘pattern test’, they enumerate 13 elements (we might describe them as ‘functions’) which are found in each work:
In this example, Nimmer has identified four roles (boy, girl, cousin/brother and best friend) and 13 functions which interrelate to make up the dramatic structure of the works in question. These roles and functions are divorced from their semantic characteristics, and are equivalent despite cosmetic differences such as the distinction between a brother and a cousin, or the use of a balcony or fire-escape. It is clear from the Nimmers’ example that, if the structure they describe is the extent of the similarity between the two works, it would probably tend very strongly towards a conclusion that the similarity between them is substantial; though, if it were in comparison with a work other than Romeo and Juliet, a higher level of similarity would be required, since at this level of abstraction what has been copied is not original. An example of a higher level of similarity might be if function 12 contained something along the lines of ‘the girl feigns death and is mistakenly discovered by the boy’. This could continue to the level of scene (a natural point of comparison in literary or dramatic works) or even, ultimately, dialogue.[180]
In contrast, the 1956 science fiction classic, Forbidden Planet, has a much more ambiguous relationship with Shakepeare’s The Tempest. Though it has been described as a ‘version’ of The Tempest, Kingsley Amis’ assessment is perhaps more accurate: ‘large areas of what I might call [The] Tempest myth reappear’[181] in Forbidden Planet. While there are some characters with parallel roles, therefore, such as the ‘mad scientist’ and his daughter, there are many characters in the film which do not have an easy equivalent in Shakespeare’s text. Moreover, while some scenes in Forbidden Planet have an equivalent function to scenes in The Tempest (the scene in which the visiting party is marooned, for example), many ostensibly similar scenes have quite different functions in each work, suggesting that the two works are fundamentally dissimilar.
Thus, while each text has a scene in which the magician/scientist discourages a potential suitor from visiting his daughter, in The Tempest the discouragement is a test of the suitor’s dedication, designed to enhance the lovers’ affection for each other. The magician/scientist in Forbidden Planet, however, possesses no such ulterior motive, and indeed the two narratives develop in quite different ways. Moreover, the elements that are common to the two texts, such as the trope of the mad scientist/magician and the concurrent theme of the danger of unregulated knowledge, are more likely to represent unoriginal elements of the science fiction genre (which itself derives from The Tempest as a key prototype),[182] and so a higher degree of similarity would be required to establish infringement in relation to these aspects of the work.
Once the dramatic structure of two works has been ascertained, this can be contrasted with the extent of similarity in relation to narrative arrangement, represented by the formalist notions of plot and story. Similarity in this respect can be determined by asking whether the reproduction of narrative goes beyond the chronological story and begins to reflect techniques such as the arrangement of scenes. Indeed, particularly with historical fiction, it is quite conceivable that two texts can tell the same story without reproducing the same plot. A recent and controversial example is the decision in Suntrust Bank,[183] in which the trustees of Margaret Mitchell’s novel, Gone with the Wind, brought an action against the publisher of a ‘retelling’ of that work by Alice Randall called The Wind Done Gone.[184]
Ms Randall’s book has been described as an example of ‘literary ventriloquism’, in which a character with a minor or even absent role in the original work takes centre stage and begins to speak.[185] Perhaps the most famous example of literary ventriloquism is Tom Stoppard’s Rosencrantz and Guildenstern Are Dead, in which the two befuddled courtiers wander aimlessly through Denmark while the story of Hamlet occurs offstage and in the background. Other instances of works which retell previously existing stories are Jean Rhys’s Wide Sargasso Sea, a response to Charlotte Brontë’s Jane Eyre, and Peter Carey’s Jack Maggs, which is told from the perspective of Magwitch, the convict turned benefactor in Dickens’s Great Expectations.[186]
In a similar vein, The Wind Done Gone chronicles the diary of a woman named Cynara, the illegitimate daughter of Planter, a plantation owner, and Mammy, a slave who cares for his children. In granting an injunction prohibiting publication of the novel, Pannell J found that the defendant’s novel used 15 fictional characters from Gone with the Wind, including Other, a representation of Scarlett O’Hara, and R, the novel’s equivalent to Rhett Butler.[187] His Honour also found the work reproduced many of Gone with the Wind’s famous scenes and dialogue. In describing the work’s narrative arrangement, his Honour commented:
Thematically, the [defendant’s] work provides a different viewpoint on the antebellum world. This new vision, however, does not simply comment on the antebellum South by giving the untold perspective of a mulatto slave who is sold from the plantation, develops a relationship with a caucasian, lives well and travels the world. Rather, the new work tells Gone with the Wind’s story, using its characters, settings and plot ... [W]ith the canvas of Gone with the Wind as a backdrop, The Wind Done Gone repeats the story of Gone with the Wind, by utilizing ... its copyrighted characters, story lines, and settings as the palette for the new story.[188]
From this description, it is clear that The Wind Done Gone reproduces the story of Gone with the Wind, in a formalist sense, but (most probably) not its plot. This would seem to negate the impression that the similarities in the two works were ‘substantial’. However, in the course of his decision, Pannell J specifically rejects the contention that this difference in narrative arrangement has any influence on the question of substantial similarity: ‘The fact that the two works may present polar viewpoints of the same fictional world fails to mitigate the fact that it is the same fictional world, described in the same way and inhabited by the same people, who are doing the same things.’[189]
There are various responses to this finding. To the extent that it rejects the influence of narrative arrangement per se in determining the issue of similarity or substantiality, it is submitted that his Honour’s decision is simply incorrect. It is clear that a story which is told from a different viewpoint, particularly where that story is interspersed with new events, characters and experiences, will at some point cease to be substantially the same as the original work. The issue of when that transition will occur is, of course, one for determination, but it is unarguable, it is submitted, that narrative arrangement can have that influence. Moreover, it is clear that the purpose of copyright protection, which is to prevent ‘the use of material [which] is so close as not to give the public anything really new’,[190] is not served by his Honour’s decision — which recognised that Ms Randall’s novel was a ‘new’ work providing a ‘new vision’ of the existing work.[191]
Finally, if large parts of The Wind Done Gone really are, as it is described, simply a summary of the plot of Gone with the Wind, then perhaps it is simply a decision which turns on its own facts — while ordinarily to provide a new perspective on existing events is not to reproduce the way in which those events have been presented, this would not be the case if, as his Honour implies, the work is simply a slavish recital or summary of the earlier work.[192] The first 100 pages of Randall’s novel are a retelling of Mitchell’s work from the perspective of Cynara, who is Scarlett O’Hara’s illegitimate half-sister. Cynara describes, usually as a silent observer, all of the central chapters of Gone with the Wind, including such famous scenes as the dramatic final one on the stairwell. On this basis, Pannell J concludes that The Wind Done Gone is substantially similar to Gone with the Wind. It is arguable, however, that his Honour’s conclusion also reflects a finding that the representation had not simply retold the story, but had gone further and reproduced the narrative as actually told.[193]
At the final stage of comparison, once the syntactic elements of the two works have been compared, their semantic characteristics can be assessed. In practice, this will usually be to confirm that what has been copied, though cosmetically different, is nevertheless substantial, or that substantiality is proved by the extent to which the infringing work includes semantic parallels such as style, setting and character traits. In Suntrust Bank, Pannell J refused to be distracted by semantic differences:
The new work merely adopts the earlier work’s descriptions and then adds a few more traits as seen by Cynara. Renaming them ... does not aid the defendant’s argument as to substantial similarity. The Wind Done Gone copies the heart of Gone with the Wind’s characters and scenes.[194]
In Zeccola (First Instance), Gray J was similarly unpersuaded by attempts to convince him, by analogy with the doctrine of scènes à faire, that ‘each is a film about a killer shark menacing human beings. ... [A] film in that category must almost necessarily involve the sea, persons to be threatened or killed, boats, piers, fishermen and a hunt’.[195]
It should be noted, however, that it is possible for a work which is otherwise non-infringing to constitute a breach of copyright based solely on its semantic similarities, though it must be acknowledged that this is rare. In Dr Seuss Enterprises v Penguin Books USA Inc,[196] substantial similarity was established on the basis that the defendant had copied the plaintiff’s distinctive style, even though the characters and events contained in the two works were quite different. A similar decision was reached in Sid & Marty Krofft Television Productions Inc v McDonald’s Corporation,[197] where the Court of Appeals for the Ninth Circuit found that the world of H R Pufnstuf (an imaginary world ‘inhabited by anthropomorphic plants and animals and other fanciful creatures’[198]) had been copied by a work which captured the ‘total concept and feel’ of the Pufnstuf show, even though no actual events had been copied.[199]
In relation to generic similarities, and the way in which they can be employed to influence the level of similarity required to establish substantiality, it should be acknowledged that ‘theorists have been unsuccessful in producing a coherent map of the system of genres and no strict definition of a single genre has won widespread acceptance’.[200] This is properly, however, a role for evidence, and expert evidence is clearly admissible to show that semantic elements of a work which would otherwise support a finding of infringement merely result from generic similarities between the two works.
The extent to which the adoption of such a method would result in different outcomes in any given case remains, of necessity, uncertain. What is notable, however, in relation to the decisions both in Zeccola and in Suntrust Bank, is the extent to which appeal courts have disagreed with what are proclaimed at trial to be unambiguous cases of similarity. Such disagreement arises not only because the law provides little guidance about the comparison of plots, but also because the principles that do exist often seem to conflict or overlap.
The purpose of this article has been to emphasise clarity as much as change for, as is often the case, in this area the latter has been prompted by an absence of the former. Moreover, the circumstances in which the protection by copyright of literary and dramatic plots is asserted will only continue to expand as media outlets continue to proliferate and notions of reinterpretation continue to push the boundaries of acceptable copying. The importance of a consistent approach to the application of copyright laws, then, is undeniable, both for the protection of authors and the effective deterrence of infringers. Courts in Australia have, to date, not had to confront in any volume the question of when the plot of a literary or dramatic work will be taken to have been infringed. However, if experience in the United States is any guide, it is vital for the courts to appreciate the nature of the task to be undertaken, since the concepts to be employed, and the analysis to be conducted, are ripe for misapplication. By reformulating the court’s approach, therefore, in an holistic and predictable way, it is possible to focus on the essential questions for determination, and to utilise techniques from outside of the law to enhance an adjudication which takes place at the intersection of legal and literary analysis.
[*] BA (Hons), LLB (Hons) (ANU). This article is derived from an honours thesis submitted at the Australian National University in June 2000. I wish to thank my supervisor, Professor Dennis Pearce, for his comments on earlier drafts of the article, and the Review’s anonymous referees for useful suggestions regarding its focus. I also wish to thank Professor Iain Wright and Dr Rich Pascal of the Department of English and Theatre Studies at ANU for guidance in relation to Russian formalism. Any errors, of course, remain my own.
[1] Quoted in Mark Rose, Authors and Owners: The Invention of Copyright (1993) 130.
[2] See Williams v Crichton, 860 F Supp 158 (SDNY, 1994).
[3] See Litchfield v Spielberg, [1984] USCA9 1128; 736 F 2d 1352 (9th Cir, 1984).
[4] See Robert Macklin, ‘Shadows over an Oscar’, Panorama, The Canberra Times (Canberra), 25 March 2000, 12.
[5] See Linton Weeks, ‘Harry Potter and the Strange Similarities’, The Age (Melbourne), 3 April 2001, T1.
[6] Benjamin Kaplan, An Unhurried View of Copyright (1967) 2.
[7] University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601, 608–9 (Peterson J) (‘University of London Press’).
[8] Augustine Birrell, Seven Lectures on the Law and History of Copyright in Books (1899) 157.
[9] [1982] AIPC 90-019, 38,298 (‘Zeccola (First Instance)’).
[10] See Robert Fuller Fleming, ‘Substantial Similarity: Where Plots Really Thicken’ (1971) 19 Copyright Law Symposium 252; G McLay, ‘Whither the Shadow: The Copyright Protection of Concepts, Characters, and Titles’ (1991) 21 Victoria University of Wellington Law Review 335. Cf Robert Sorensen and Theodore Sorensen, ‘Re-Examining the Traditional Legal Test of Literal Similarity: A Proposal for Content Analysis’ (1952) 37 Cornell Law Quarterly 638; Melville Nimmer, ‘Inroads on Copyright Protection’ (1951) 64 Harvard Law Review 1125.
[11] Cf Golding v RKO Pictures Inc, 35 Cal 2d 690, 710 (1950) (Schauer J, dissenting).
[12] An Act for the Encouragement of Learning by Vesting the Copies of Printed Books in the Authors or Purchasors of Such Copies during the Times Therein Mentioned 1709 (Imp) 8 Anne, c 19.
[13] Statute of Anne s 1.
[15] Rose, above n 1, 60 has identified Pope v Curll [1741] EngR 500; (1741) 2 Atk 342; 26 ER 608 as the decision in which ‘the notion of the essentially immaterial nature of the object of copyright was born’. In relation to the literary property debates of the 18th century, and the abstraction of literary property generally, see Rose, above n 1 and Brad Sherman and Alain Strowel (eds), Of Authors and Origins: Essays on Copyright Law (1994).
[16] Millar v Taylor [1769] EngR 44; (1769) 4 Burr 2303, 2396; [1769] EngR 44; 98 ER 201, 251 (Lord Mansfield).
[17] [1854] EngR 816; (1854) 4 HL Cas 815, 867; [1854] EngR 816; 10 ER 681, 702. See also Holmes v Hurst, [1899] USSC 94; 174 US 82, 86 (1899) (Brown J):
The right thus secured by the copyright act is not a right to the use of certain words, because they are the common property of the human race, and are as little susceptible of private appropriation as air or sunlight; nor is it the right to ideas alone, since in the absence of means of communicating them they are of value to no one but the author. But the right is to that arrangement of words which the author has selected to express his ideas.
[19] Burnett v Chetwood [1816] EngR 26; (1720) 2 Mer 441, 441; [1816] EngR 26; 35 ER 1008, 1009 (Parker C).
[20] Ibid. The case was ultimately decided on other grounds. See Kaplan, above n 6, 9–10.
[21] Gyles v Wilcox [1740] EngR 77; (1740) Barn Ch 368; 26 ER 489.
[22] Newbery’s Case (1773) Loft 775; 98 ER 913.
[23] Sayre v Moore (Unreported, Lord Mansfield CJ, 1785), discussed in Cary v Longman [1801] EngR 198; (1801) 1 East 358, 361; [1801] EngR 198; 102 ER 138, 139–40 (Lord Kenyon CJ).
[25] Engraving Copyright Act 1734 (Imp) 8 Geo 2, c 13; Engraving Copyright Act 1767 (Imp) 7 Geo 3, c 38; Copyright Act 1775 (Imp) 15 Geo 3, c 53; Prints Copyright Act 1777 (Imp) 17 Geo 3, c 57; Sculpture Copyright Act 1814 (UK) 54 Geo 3, c 56; Dramatic Copyright Act 1833 (UK) 3 & 4 Wm 4, c 15; Lectures Copyright Act 1835 (UK) 5 & 6 Wm 4, c 65; Prints and Engraving Copyright (Ireland) Act 1836 (UK) 6 & 7 Wm 4, c 59; Copyright Act 1836 (UK) 6 & 7 Wm 4, c 110; Copyright Act 1842 (UK) 5 & 6 Vict, c 45.
[26] Engraving Copyright Act 1734 (UK) 8 Geo 2, c 13, s 1.
[27] [1809] EngR 497; (1809) 16 Ves Jun 269; 33 ER 987.
[29] (1822) B & Ald 738, 743; 106 ER 1361, 1363 (Lord Eldon LC).
[30] Act of 18 August 1856, ch 169, 11 Stat 138 (1856).
[31] Daly v Palmer, 6 Fed Cas 1132 (SDNY, 1868).
[32] Attributed to T W Clarke (1869) American Law Review 453: quoted in Kaplan, above n 6, 32.
[33] Section 1(2).
[34] (1913) 30 TLR 116, 117.
[35] (1914) MacG Cop Cas 168, 174 (Swinfen Eady LJ).
[36] Section 32.
[37] University of London Press [1916] 2 Ch 601, 608 (Peterson J).
[38] The meaning of ‘original’ in this context is discussed in text accompanying below n 58.
[39] Copyright Act 1968 (Cth) s 31(1)(a)(i), (vi); see also s 22(1). ‘Adaptation’ is defined in s 10(1) to include a dramatisation, fictionalisation or translation. The ‘adaptation’ right encompasses the production of ‘derivative works’, and is itself the subject of extensive litigation. This article concerns the situation in which a new work is alleged to be a reproduction of (a substantial part of) the earlier work, rather than an adaptation of it.
[40] Copyright Act 1968 (Cth) ss 36(1), 14(1).
[41] Copyright Act 1968 (Cth) s 21.
[42] Copyright Act 1968 (Cth) s 22(1).
[43] Copyright Act 1968 (Cth) ss 36(1), 31(1)(a)(i).
[44] Dymow v Bolton, 11 F 2d 690 (2nd Cir, 1926); Wiren v Shubert Theatre Corporation, 5 F Supp 358 (SDNY, 1933); Gropper v Warner Bros Pictures Inc, 38 F Supp 329 (SDNY, 1941); Schwartz v Universal Pictures Corporation, 85 F Supp 270 (SD Cal, 1945).
[45] In relation to the idea–expression distinction, see Charles Collins, ‘Some Obsolescent Doctrines of the Law of Copyright’ (1928) 1 Southern California Law Review 127; Robert Yale Libott, ‘Round the Prickly Pear: The Idea–Expression Fallacy in a Mass Communications World’ (1967) 14 UCLA Law Review 735; Andrew Christie, ‘Copyright Protection for Ideas: An Appraisal of the Traditional View’ [1984] MonashULawRw 8; (1984) 10 Monash University Law Review 175; Edward Samuels, ‘The Idea–Expression Dichotomy in Copyright Law’ (1989) 56 Tennessee Law Review 321; Amy Cohen, ‘Copyright Law and the Myth of Objectivity: The Idea–Expression Dichotomy and the Inevitability of Artistic Value Judgements’ (1990) 66 Indiana Law Journal 175; Leslie Kurtz, ‘Speaking to the Ghost: Idea and Expression in Copyright’ (1993) 47 University of Miami Law Review 1221.
[46] Cf Copyright Act of 1976 s 102(b), 17 USC s 101 (1982).
[47] The proper role of the idea–expression distinction in this context is outlined below in text accompanying n 83.
[49] Blackie & Sons Ltd v The Lothian Book Publishing Co Pty Ltd [1921] HCA 27; (1921) 29 CLR 396, 403 (Starke J).
[50] Cf TCN Channel Nine v Network Ten [2001] FCA 108; [2001] AIPC 91-699 (Conti J).
[51] (1914) MacG Cop Cas 168, 174 (Swinfen Eady LJ).
[52] [1934] 1 Ch 593, 606 (Slesser LJ).
[53] [1964] 1 WLR 273 (‘Ladbroke’).
[54] This is by no means an uncontroversial claim. As Rose, above n 1, 3 states: copyright is ‘a specifically modern institution, the creature of the printing press, the individualization of authorship in the late Middle Ages and early Renaissance, and the development of the advanced marketplace society in the seventeenth and eighteenth centuries’. Chaucer, Shakespeare and Milton (who, according to Northrop Frye, ‘asked for nothing better than to steal as much as possible out of the Bible’: Northrop Frye, Anatomy of Criticism: Four Essays (1957) 96) are examples of a literary tradition, stretching back to Virgil and Homer, of cultural appropriation and re-interpretation which is at odds with Lord Pearce’s view. See generally, Martha Woodmansee and Peter Jaszi (eds), The Construction of Authorship: Textual Appropriation in Law and Literature (1994).
[55] [1964] 1 WLR 273, 293 (Lord Pearce).
[56] (1993) 1976 CLR 300, 305.
[57] [1999] HCA 49; (1999) 166 ALR 228, 248 (Gleeson CJ, McHugh, Gummow and Hayne JJ). See also Cantor Fitzgerald International v Tradition (UK) Ltd [2000] RPC 95, 130 (Pumfrey J).
[58] Copyright Act 1911 (UK) 1 & 2 Geo 5, c 46, s 1(1). The 1911 Act did not introduce the requirement for originality, which had always been a requirement of copyright: Sands & McDougall Pty Ltd v Robinson [1917] HCA 14; (1917) 23 CLR 49, 53 (Isaacs J).
[59] [1916] 2 Ch 601, 609.
[60] Ibid 608.
[61] [1917] HCA 14; (1917) 23 CLR 49, 53 (Isaacs J).
[62] See Walter v Lane [1900] UKLawRpAC 52; [1900] AC 539, 548 (Lord Halsbury LC) (‘though I think in these compositions there is literary merit and intellectual labour, yet the statute seems to me to require neither, nor originality either in thought or in language’), 552 (Lord Davey) (‘Copyright has nothing to do with the originality or literary merits of the author or composer’). See also Victoria Park Racing & Recreation Grounds Co Ltd v Taylor [1937] HCA 45; (1937) 58 CLR 479, 511 (Dixon J) (‘This does not mean that new or inventive ideas must be contributed ... [t]he work need show no literary or other skill or judgment’) and Telstra Corporation Limited v Desktop Marketing Systems Pty Ltd [2001] FCA 612 (Unreported, Finkelstein J, 25 May 2001) [43]–[44], [64].
[63] See, eg, Feist Publications Inc v Rural Telephone Service Co, [1991] USSC 50; 499 US 340 (1991) (‘Feist’).
[64] Ibid 345 (O’Connor J) (emphasis added).
[65] [2001] FCA 612 (Unreported, Finkelstein J, 25 May 2001).
[66] Ibid [84].
[67] Pt IV of the Act provides for copyright in ‘sound recordings’ (s 85), ‘cinematograph films’ (s 86), ‘television broadcasts and sound broadcasts’ (s 87) and ‘published editions of works’ (s 88).
[68] See CBS Records Australia Ltd v Telmak Teleproducts (Australia) Pty Ltd (1987) 9 IPR 440.
[69] Nationwide News Pty Ltd v Copyright Agency Ltd [1996] FCA 1395; (1996) 65 FCR 399, 418–20 (Sackville J).
[70] TCN Channel Nine v Network Ten [2001] FCA 108; [2001] AIPC 91-699, 39,413–15, 39,418–19 (Conti J).
[71] Ibid 39,419. In relation to the differences between ‘parody’, ‘burlesque’ and ‘satire’, see at 39,411–12.
[72] [1989] FCA 544; (1989) 17 IPR 99, 105. See also TCN Channel Nine v Network Ten [2001] FCA 108; [2001] AIPC 91-699, 39,418–19 where, after a review of the authorities, Conti J concluded that copying for the purposes of parody or burlesque does not absolve an infringer ‘in the absence of the infringer’s input of such skill and labour such as to constitute the otherwise infringing work as an original work.’
This approach, it is submitted, is problematic. By looking at the nature of the work, rather than the nature of the copying, courts run the risk of returning to the 18th century principles which led to translations, abridgments and histories escaping actions for breach of copyright because they ‘in some respects may be called a different book’: Burnett v Chetwood [1816] EngR 26; (1720) 2 Mer 441, 441; [1816] EngR 26; 35 ER 1008, 1009 (Parker C). There is also the potential to distort the meaning of substantiality by premising an exception to a question of fact on the subjective intention of the infringer. Fundamentally, it is submitted, such an approach introduces to the question of substantiality considerations which are more appropriately analysed in relation to fair dealing, where they can properly be assessed against more explicit policy considerations. See Moana Weir, ‘Making Sense of Copyright Law Relating to Parody: A Moral Rights Perspective’ [1992] MonashULawRw 9; (1992) 18 Monash University Law Review 194. As the Act currently stands, however, it is clear that the defence of fair dealing would not apply to parody. See AGL Sydney Ltd v Shortland County Council [1989] FCA 544; (1989) 17 IPR 99, 105 (Foster J); below n 81.
[73] Campbell v Acuff-Rose Music Inc, 510 US 569, 579–82 (1994) (Souter J).
[74] Copyright Act of 1976 s 107, 17 USC s 101 (1982). The doctrine of ‘fair use’ is in some respects analogous to the Australian defence of ‘fair dealing’: see Copyright Act 1968 (Cth) s 40(2).
[76] 510 US 569, 579 (1994).
[77] (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001) (‘Suntrust Bank’).
[78] The facts of this case, and in particular the approach of the District Court in making a finding of substantial similarity, are discussed in more detail in text accompanying below nn 183–93.
[79] Suntrust Bank (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001) 34, 51. Pannell J’s decision has been overturned by the Court of Appeals for the 11th Circuit: Suntrust Bank v Houghton Mifflin Co (Unreported, United States Court of Appeals for the 11th Circuit, Birch, Marcus and Wood JJ, 25 May 2001). However, the Court has yet to provide an opinion in support of its order.
[80] [1916] 1 Ch 261, 268–9 (Younger J).
[81] [2001] FCA 108; [2001] AIPC 91-699. The Suntrust Bank decision raises interesting questions in relation to the position under Australian law. In Australia, unlike in the United States, the Act does not provide for a general defence of ‘fair dealing’, but rather limits the exception to defined purposes, including ‘if it is for the purpose of criticism or review ... and a sufficient acknowledgement of the work is made’: Copyright Act 1968 (Cth) s 41. It is doubtful that a ‘retelling’ of a previously published story would fall within these provisions, particularly those relating to ‘sufficient acknowledgement’ which require the title and author of the original work to be identified. It would, however, probably constitute an ‘original work’ as that notion is understood in Glyn v Weston Feature Film Co [1916] 1 Ch 261, particularly in light of the US jurisprudence on ‘transformative use’. The result is that the same work could be found to be an infringing copy under the US legislation because ‘fair use’ is not established, but would not be an infringement in Australia because of a lack of ‘substantiality’. This only strengthens the argument that the policy considerations in favour of treating parody less strictly should be enshrined in statute, rather than inserted into the common law.
[83] 45 F 2d 119, 121 (2nd Cir, 1930).
[84] Kaplan, above n 6, 48. Cf Samuels, above n 45, 339–47.
[85] Nichols v Universal Pictures Corporation, 45 F 2d 119, 122 (2nd Cir, 1930).
[86] [2001] FCA 108; [2001] AIPC 91-699.
[87] W R Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (3rd ed, 1996) 363, cited in ibid 39,408. See also the comments of Learned Hand J in Peter Pan Fabrics Inc v Martin Weiner Corporation, 274 F 2d 487, 489 (2nd Cir, 1960) and of Jacob J in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 29 IPR 25, 49.
[88] Nichols v Universal Pictures Corporation, 45 F 2d 119, 121 (2nd Cir, 1930).
[89] Zechariah Chafee, ‘Reflections on the Law of Copyright: I’ (1945) 45 Columbia Law Review 503, 513.
[90] The United States is not the world’s leading producer of cinema. However, the extent to which the Indian courts have dealt with this question, although fascinating, is beyond the scope of this article.
[91] Copyright Act of 1976, 17 USC s 101 (1982).
[92] Novak v National Broadcasting Co, 716 F Supp 745, 750 (SDNY, 1989); Alexander v Irving Trust Co, 132 F Supp 364 (SDNY, 1955).
[93] The effect of the Australian legislation is that the court is required to ask itself whether there is objective similarity between the defendant’s work and a substantial part of the plaintiff’s work. See Zeccola v Universal City Studios Inc [1982] FCA 241; (1982) 46 ALR 189, 193 (Lockhart and Fitzgerald JJ) (‘Zeccola (Appeal)’): ‘The primary judge correctly realized that two questions were involved ... namely, the degree of objective similarity between the appellant’s film and the respondent’s novel and screenplay and, given sufficient objective similarity, whether copying was established.’
[94] See London v Biograph Co, 23 F 696, 698 (2nd Cir, 1916).
[95] See generally Melville Nimmer and David Nimmer, Nimmer on Copyright, vol 4 (at 51-5-00) pt 13.03[A]. Nimmer notes that, while his distinction has received ‘almost no express judicial recognition’ (13-29), his terminology is endorsed in Ringgold v Black Entertainment Television Inc, [1997] USCA2 527; 126 F 3d 70, 75, fn 3 (2nd Cir, 1997) and Twin Peaks Productions Inc v Publications International Ltd, [1993] USCA2 755; 996 F 2d 1366, 1372, fn 1 (2nd Cir, 1993). A case in which Nimmer’s terminology and method was applied is Paramount Pictures Corporation v Carol Publishing Group, 11 F Supp 2d 329, 333 (SDNY, 1998).
[96] Nimmer and Nimmer, above n 95, vol 4 (at 52-9-00) 13-29.
[97] Ibid vol 4 (at 51-5-00) 13-28.
[98] 35 F 3d 1435, 1439 (9th Cir, 1994) (Rymer J).
[99] Nimmer and Nimmer, above n 95, vol 2 (at 47-12-98) 2-34.
[100] Ibid.
[101] Ibid vol 4 (at 52-9-00) 13-65. See also Harold Lloyd Corporation v Witwer, 65 F 2d 1, 24 (9th Cir, 1933).
[102] Chafee, above n 89, 513–14.
[103] Warner Bros v American Broadcasting Cos, [1983] USCA2 924; 720 F 2d 231, 241 (2nd Cir, 1983) (Newman J).
[104] Cf Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 192 (Lockhart and Fitzgerald JJ) and the discussion below Part IV(B).
[105] Feist[1991] USSC 50; , 499 US 340, 348 (1991) (O’Connor J).
[106] In relation to scènes à faire generally, see Leslie Kurtz, ‘The Scènes à Faire Doctrine’ (1989) 41 Florida Law Review 79.
[107] 47 F Supp 1013, 1017 (SD Cal, 1942).
[108] Leon Yankwich, ‘Originality in the Law of Intellectual Property’ (1951) 11 Federal Rules Decisions 457, 462 (emphasis in original).
[109] [1976] USCA2 278; 533 F 2d 87, 91 (2nd Cir, 1976).
[110] Dellar v Samuel Goldwyn Inc, 150 F 2d 612, 613 (2nd Cir, 1945).
[111] See, eg, Anderson v Paramount Pictures Corporation, 617 F Supp 1 (CD Cal, 1985). Kurtz, ‘The Scènes à Faire Doctrine’ above n 106, 11 lists the similarities claimed between the plaintiff’s ‘romantic melodrama’, High Stakes, and the defendant’s comedy, Trading Places, as including:
two wealthy characters who make a bet and ride around in a chauffered limousine; people toasting with champagne; a character who pretends to be blind with dark glasses and a change cup ... wallets containing credit cards, people chewing gum, houses with fireplaces, men shaving, and passing references to Harvard, the Russians, and unemployment.
[112] [1980] USCA2 258; 618 F 2d 972, 979–80 (2nd Cir, 1980).
[113] Herzog v Castle Rock Entertainment, [1999] USCA11 1066; 193 F 3d 1241, 1257 (11th Cir, 1999), quoting Beal v Paramount Pictures Corporation, [1994] USCA11 816; 20 F 3d 454, 460 (11th Cir, 1994) (Anderson J).
[114] See Nimmer and Nimmer, above n 95, vol 4 (at 51-5-00) 13-35; Samuels, above n 45, 408–38.
[115] Aside from the two Zeccola decisions (at first instance and on appeal), recent Australian authority appears limited to Telmak Teleproducts Australia Pty Ltd v Bond International Pty Ltd (1986) 65 ALR 319 and Peters v Coulter (1995) 33 IPR 50.
[116] Decisions in the United States appear much more frequently to be the subject of appeal, and there is an abundance of authority in particular from the Court of Appeals for the 2nd and the 9th Circuits, reflecting their jurisdiction over the two most significant media centres in the United States: Los Angeles and New York.
[117] In Peters v Coulter (1995) 33 IPR 50, 52, Branson J quoted from the decision of Jacob J in Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 29 IPR 25, 49: ‘In the end the matter must be left to the value judgment of the court.’ Cf Zeccola (First Instance) [1982] AIPC 90-019, 38,298 (Gray J).
[118] [1982] AIPC 90-019, 38,293.
[119] Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189.
[120] There was an issue at first instance and on appeal about the definition of ‘copy’ in s 10(1) of the Act, and whether the plaintiff’s copyright in the film Jaws (as distinct from the book or the screenplay) could be infringed other than by an exact or facsimile copy of the film. Gray J’s analysis, however, assumed the plot of the plaintiff’s three works to be relevantly the same, even though he did not have time to fully read the novel or the screenplay and decided the question before him by comparing Great White to the film of Jaws: Zeccola (First Instance) [1982] AIPC 90-019, 38,296–7.
[121] Ibid 38,298. The second of these questions, whether there was actual copying, is of course a requirement that needs to be satisfied in every action for breach of copyright. Where it is denied, it is usually established by showing objective similarity and access to the copyrighted work. See Francis Day & Hunter Ltd v Bron [1963] Ch 587, 625–7 (Diplock LJ). However, Gray J is correct to state that the questions are separate, and both are questions of fact.
[122] Zeccola (First Instance) [1982] AIPC 90-019, 38,298. Here Gray J appears to be eliding the subjective question of copying and the objective question of similarity.
[123] Ibid.
[124] Ibid.
[125] Ibid.
[126] Ibid 38,301.
[127] Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 192 (Lockhart and Fitzgerald JJ).
[128] Ibid.
[129] Ibid 194.
[130] Ibid 192.
[131] See text accompanying above n 102.
[132] Zeccola (Appeal) [1982] FCA 26; (1982) 40 ALR 189, 192. The Court went on to say (at 192): ‘Another author who materially varies the incidents and characters and materially changes the story is not an infringer of the copyright.’ Significantly, this statement paraphrases the decision in Harold Lloyd Corporation v Witwer, 65 F 2d 1, 24 (9th Cir, 1933) (Wilbur J):
[W]here various incidents, in themselves common literary property, are grouped to form a particular story, [the author] must be confined, in his claim to copyright, closely to the story he has thus composed ... [A]nother author, who, by materially varying the incidents, materially changes the story, should not be held to be an infringer.
[133] (1890) 25 QB 99, 102.
[134] Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 192.
[135] [1991] USSC 50; 499 US 340, 348 (1991).
[136] 8 Fed Cas 615, 619 (CCD Mass, 1845). Story J’s comments were cited with approval by the Privy Council in Macmillan & Co Ltd v K & J Cooper (1923) 93 LRPC 113, 117–18 (Lord Atkinson).
[137] Chafee, above n 89, 514.
[138] Zeccola (First Instance) [1982] AIPC 90-019, 38,301.
[139] Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 194 (Lockhart and Fitzgerald JJ).
[140] [1916] 2 Ch 601, 610.
[141] Quoted in Mark Litwak, Reel Power: The Struggle for Influence and Success in the New Hollywood (1986) 173 and in Douglas Y’Barbo, ‘Aesthetic Ambition versus Commercial Appeal: Adapting Novels to Film and the Copyright Law’ (1998) 10 St Thomas Law Review 299, 312–13.
[142] Fleming, above n 10, 254. Cf the statements quoted in Golding v RKO Pictures, Inc, 35 Cal 2d 690, 696–7 (1950) (Edmonds J).
[143] Robert Scholes, Structuralism in Literature: An Introduction (1974) 41.
[144] Ferdinand de Saussure, Course in General Linguistics (Wade Baskin trans, revised ed, 1974).
[145] See Frederic Jameson, The Prison-House of Language: A Critical Account of Structuralism and Russian Formalism (1972) 5–22.
[146] There are clear parallels between this notion and the idea–expression distinction. See Jefferys v Boosey [1854] EngR 816; (1854) 4 HLC 815; 10 ER 681 (Erle J).
[147] Scholes, above n 143, 13.
[148] Saussure, above n 144, 16.
[149] Claude Lévi-Strauss, Structural Anthropology (Claire Jacobson and Brook Grundfest Schoepfs trans, 1963) vol 2.
[150] Roland Barthes, Système de la mode (Matthew Ward and Richard Howard trans, 1983).
[151] Vladimir Propp, Morphology of the Folktale (Laurence Scott trans, 2nd ed, 1968).
[152] Ibid 21.
[153] See ibid 21–3.
[154] Jameson, above n 145, 64–5.
[155] See Jonathan Culler, Structuralist Poetics (1975) 207–14.
[156] Jameson, above n 145, 61.
[157] David Bordwell, Narration in the Fiction Film (1985) 49–50.
[158] Rick Altman, ‘A Semantic/Syntactic Approach to Film Genre’ in Barry Grant (ed), Film Genre Reader (1986) 26, 30.
[159] Ibid 33.
[160] Scholes, above n 143, 60.
[161] Chafee, above n 89, 513–14.
[162] 247 F Supp 518, 525 (EDNY, 1965) (Bartels J).
[163] [1982] AIPC 90-019, 38,298.
[164] Sid & Marty Krofft Television Productions Inc v McDonald’s Corporation[1977] USCA9 1191; , 562 F 2d 1157 (9th Cir, 1977). This test has been the subject of much criticism, and the 9th Circuit appears to be moving away from it: see Shaw v Lindheim, [1990] USCA9 1083; 919 F 2d 1353 (9th Cir, 1990). See also Fleming, above n 10, 274–9; Nimmer and Nimmer, above n 95, vol 4 (at 51-5-00) 13-78 – 13-111.
[165] See Zeccola (First Instance) [1982] AIPC 90-019, 38,301 (Gray J). See also Bauman v Fussell [1978] RPC 485, 489 (Birkett LJ).
[166] The Full Court declared that it was open for his Honour to so decide, on the assumption that by ‘the question of copying’ his Honour was eliding the issues of similarity and copying, which could properly be described as the ultimate issues in the proceeding: Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 194 (Lockhart and Fitzgerald JJ), 197 (Jenkinson J).
[167] Evidence Act 1995 (Cth) s 80. See the commentary in Stephen Odgers, Uniform Evidence Law (3rd ed, 1998) 218–21.
[168] It seems clear that both the questions of similarity and substantiality are questions of fact, rather than law. See Blackie & Sons Ltd v The Lothian Book Publishing Co Pty Ltd [1921] HCA 27; (1921) 29 CLR 396, 403 (Starke J). Cf the comments of Jenkinson J in Zeccola (Appeal) [1982] FCA 241; (1982) 46 ALR 189, 197.
[169] Libott, above n 45, 742.
[170] Fleming, above n 10, 261. See also Sorensen and Sorensen, above n 10; Nimmer, above n 10.
[171] Georges Polti, The Thirty-Six Dramatic Situations (Lucille Ray trans, 1921), cited in Golding v RKO Pictures Inc, 35 Cal 2d 690, 710 (1950) (Schauer J, dissenting). Cf Étienne Souriau, Les deux cent mille situations dramatiques (1950), which calculates the number of dramatic situations to be 210 141, and Joseph Campbell, The Hero with a Thousand Faces (1949), which is alleged to be the basis for both the movie Star Wars and Disney’s The Lion King. See Scholes, above n 143, 50–8; Twentieth Century-Fox Film Corporation v MCA Inc, [1983] USCA9 756; 715 F 2d 1327 (9th Cir, 1983).
[172] Golding v RKO Pictures Inc, 35 Cal 2d 690, 710 (1950) (Schauer J, dissenting).
[173] See Stephen Bottomley, Neil Gunningham and Stephen Parker, Law in Context (1991) 46–7.
[174] Nimmer and Nimmer, above n 95, vol 4 (at 51-5-00) 13-33.
[175] Woodmansee and Jaszi, above n 54, 13.
[176] 45 F 2d 119 (2nd Cir, 1930).
[177] Ibid 122.
[178] Nimmer and Nimmer, above n 95, vol 4 (at 51-5-00) 13-33 – 13-34.
[179] Ibid vol 4 (at 51-5-00) 13-33.
[180] See also the example in Y’Barbo, above n 141, 315–19, concerning Jane Austen’s Emma and the 1995 film Clueless. In that case too, it is clear that the copying is deliberate, and that an informed audience was intended to appreciate the parallels between the two texts. What is interesting, however, is that nowhere in the film is the debt to Austen’s novel acknowledged.
[181] Kingsley Amis, New Maps of Hell: A Survey of Science Fiction (1961) 30.
[182] Ibid 33–4.
[183] (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001.)
[184] This decision has already been discussed in relation to parody. See text accompanying above n 77–9.
[185] Marjorie Garber, ‘The Chapter after “The End”’, The New York Times (New York, USA), 8 April 2001, pt 4, 15.
[186] Hillel Italie, ‘Pulling the Plug When a Parody Cuts Too Close’, Canberra Sunday Times (Canberra), 22 April 2001, 55. The difference between using the work of authors such as Dickens and Brontë, of course, is that such works are no longer protected by copyright and have become part of the ‘public domain’.
[187] The notion of copyright protection for characters, though fascinating, is beyond the scope of this article. See Andrew Williamson, ‘Copyright in Literary and Dramatic Plots and Characters’ [1983] MelbULawRw 21; (1983) 14 Melbourne University Law Review 300; E Fulton Brylawski, ‘Protection of Characters — Sam Spade Revisited’ (1974) 22 Bulletin of the Copyright Society of USA 77. See also the comments of Learned Hand J in Nichols v Universal Pictures Corporation, 45 F 2d 119, 121 (2nd Cir, 1930).
[188] Suntrust Bank (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001) 10–11.
[189] Ibid 14.
[190] Chafee, above n 89, 514.
[191] His Honour also found that the work had ‘transformative’ characteristics, which tended towards a finding in favour of fair use. However, his Honour concluded that the other factors he was required to consider in relation to fair use outweighed the transformative nature of the parody: Suntrust Bank (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001) 34, 51.
[192] Ibid 12–14, 39–40.
[193] As was noted in above n 79, Pannell J’s decision has been overturned by the Court of Appeals for the 11th Circuit: Suntrust Bank v Houghton Mifflin Co (Unreported, United States Court of Appeals for the 11th Circuit, Birch, Marcus and Wood JJ, 25 May 2001). However, to date the Court has yet to provide an opinion in support of its order. It is not possible to determine, therefore, on what basis the Court of Appeals disagreed with his Honour. It seems likely, however, on the basis of the short order that was given, that the main area of disagreement concerns the application of the ‘fair use’ factors and the granting of an injunction, rather than the finding of substantial similarity.
[194] Suntrust Bank (Unreported, United States District Court, Northern District of Georgia, Pannell J, 20 April 2001) 14.
[195] [1982] AIPC 90-019, 38,298.
[196] 924 F Supp 1559 (SD Cal, 1996).
[197] [1977] USCA9 1191; 562 F 2d 1157 (9th Cir, 1977).
[198] Ibid 1167.
[199] This decision has been the subject of much criticism. See Nimmer and Nimmer, above n 95, vol 4 (at 51-5-00) 13-78 – 13-111.
[200] David Bordwell, Making Meaning (1989) 147.
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