<b>Decision of Note</b> Film Owner Can't Claim Copyright Protection for Actor's Multiple Roles

To determine whether a defendant's work is substantially similar to a plaintiff's work in a copyright infringement case, courts generally first discard any unprotectable elements from the plaintiff's work. The U.S. District Court for the Southern District of New York recently ruled that the use of one actor to play multiple roles in the plaintiff's 1949 comedy film Kind Hearts and Coronets wasn't a protectable element for proving infringement by the authors of a stage musical adapted from the film. Canal+Image UK Ltd. v. Lutvak, 10 Civ. 1536. The movie was drawn from the novel Israel Rank, which is now in the public domain. In 2003, film owner Canal+ granted Steven Lutvak and Robert L. Freedman “the exclusive authorization, to the extent of the interests of [Canal+] ' to adapt the Film ' as a live stage musical presentation.” Lutvak and Freedman then developed A Gentleman's Guide to Love and Murder. But Canal+ exercised its right to terminate the adaptation agreement by deciding not to proceed with the musical. When the authors nevertheless continued with the production, Canal+ filed suit, alleging that Lutvak and Freedman “have retained the style and occurrence of humorous, non-realistic deaths from the Film, deaths which are very different from the horrifyingly realistic ways in which the victims die in Israel Rank.” The complaint also alleged that “defendants' retitled musical has retained the central and most memorable expressive part of Kind Hearts and Coronets: the comedy inherent in having all eight of the aristocratic murder victims played by a single actor [i.e., Alec Guinness in the movie].”

Granting the defendants' motion to dismiss, District Judge Richard J. Howell found that the film's “comedic adaption of the Novel is not protectable” and that the “setting is not protectible [sic] not only because it is historical but because it is also the setting of the Novel.” Judge Howell further noted: “Both works use one actor to play multiple roles, but under the discerning observer test, that device is not protectible. And however protectible a combination of elements might be under the total concept and feel test [for determining substantial similarity], the works do not have a similar feel. Canal+ would have the Court apply a kind of intermediate test that examines not the elements alone or the works in their entirety but only one aspect of those works: how the decision to portray characters in a story interacts with that story. At bottom, however, that inquiry merely asks how parts have been acted. As applied here, that amounts to an argument that Sir Alec Guinness's tour de force is protectible. But it is no more protectible than Charles Laughton's Henry VIII or Sir Laurence Olivier's Hamlet.”

Canal+ also alleged breach of contract, but Judge Howell decided that cause of action was preempted by the copyright law. District judges within the U.S. Court of Appeals for the Second Circuit, within which the Southern District resides, have expressed differing views on the contract-claim preemption issue. Judge Howell observed that “if the breach of contract claim is based on allegations that the parties' contract creates a right not existing under copyright law ' a right based upon a party's contractual promise [e.g., a promise to pay] ' and the plaintiff is suing to protect that contractual right, then the claim is not preempted.”

But in Canal+Image UK, Judge Howell concluded: “[T]here is no reason why preemption should not apply with respect to the particular promise at issue here. Canal+ alleges that Defendants have breached a promise to 'cease dealing in and with any materials written or created by [them] which represent, incorporate or embody the Film or any elements in the Film, including without limitation, the text, characters, and situations in the Film, all of which elements shall be deemed to have reverted to [Canal+].' ' [T]he claim that Defendants usurped the exclusive right of Canal+ to adapt the Film is nothing more than a claim that Defendants have violated a right of Canal+ under the Copyright Act.”

To determine whether a defendant's work is substantially similar to a plaintiff's work in a copyright infringement case, courts generally first discard any unprotectable elements from the plaintiff's work. The U.S. District Court for the Southern District of New York recently ruled that the use of one actor to play multiple roles in the plaintiff's 1949 comedy film Kind Hearts and Coronets wasn't a protectable element for proving infringement by the authors of a stage musical adapted from the film. Canal+Image UK Ltd. v. Lutvak, 10 Civ. 1536. The movie was drawn from the novel Israel Rank, which is now in the public domain. In 2003, film owner Canal+ granted Steven Lutvak and Robert L. Freedman “the exclusive authorization, to the extent of the interests of [Canal+] ' to adapt the Film ' as a live stage musical presentation.” Lutvak and Freedman then developed A Gentleman's Guide to Love and Murder. But Canal+ exercised its right to terminate the adaptation agreement by deciding not to proceed with the musical. When the authors nevertheless continued with the production, Canal+ filed suit, alleging that Lutvak and Freedman “have retained the style and occurrence of humorous, non-realistic deaths from the Film, deaths which are very different from the horrifyingly realistic ways in which the victims die in Israel Rank.” The complaint also alleged that “defendants' retitled musical has retained the central and most memorable expressive part of Kind Hearts and Coronets: the comedy inherent in having all eight of the aristocratic murder victims played by a single actor [i.e., Alec Guinness in the movie].”

Granting the defendants' motion to dismiss, District Judge Richard J. Howell found that the film's “comedic adaption of the Novel is not protectable” and that the “setting is not protectible [sic] not only because it is historical but because it is also the setting of the Novel.” Judge Howell further noted: “Both works use one actor to play multiple roles, but under the discerning observer test, that device is not protectible. And however protectible a combination of elements might be under the total concept and feel test [for determining substantial similarity], the works do not have a similar feel. Canal+ would have the Court apply a kind of intermediate test that examines not the elements alone or the works in their entirety but only one aspect of those works: how the decision to portray characters in a story interacts with that story. At bottom, however, that inquiry merely asks how parts have been acted. As applied here, that amounts to an argument that Sir Alec Guinness's tour de force is protectible. But it is no more protectible than Charles Laughton's Henry VIII or Sir Laurence Olivier's Hamlet.”

Canal+ also alleged breach of contract, but Judge Howell decided that cause of action was preempted by the copyright law. District judges within the U.S. Court of Appeals for the Second Circuit, within which the Southern District resides, have expressed differing views on the contract-claim preemption issue. Judge Howell observed that “if the breach of contract claim is based on allegations that the parties' contract creates a right not existing under copyright law ' a right based upon a party's contractual promise [e.g., a promise to pay] ' and the plaintiff is suing to protect that contractual right, then the claim is not preempted.”

But in Canal+Image UK, Judge Howell concluded: “[T]here is no reason why preemption should not apply with respect to the particular promise at issue here. Canal+ alleges that Defendants have breached a promise to 'cease dealing in and with any materials written or created by [them] which represent, incorporate or embody the Film or any elements in the Film, including without limitation, the text, characters, and situations in the Film, all of which elements shall be deemed to have reverted to [Canal+].' ' [T]he claim that Defendants usurped the exclusive right of Canal+ to adapt the Film is nothing more than a claim that Defendants have violated a right of Canal+ under the Copyright Act.”