Uphill Battle in Infringement Suits Against Studios

A paunchy panda with a taste for Chinese food and a dream of becoming a kung fu master walks into the restaurant where he works as a waiter. There, he meets up with his martial arts mentor, a small red panda wielding chopsticks as weapons. Soon, backed by five kung fu'fighting friends ' a crane, a mantis, a monkey, a snake and a tiger ' the panda is training to battle an evil animal antagonist to save the “Valley of Peace.”

Sounds familiar, right? Of course. It's the story of Po, the star of DreamWorks Animation's 2008 animated hit Kung Fu Panda, which grossed more than $630 million in box office sales worldwide and $100 million in DVD sales, and spawned a popular video game, an online virtual world and a potential blockbuster sequel set for release on May 26.

Actually, the story described above comes from the Kung Fu Panda Power Works collection created by illustrator Jayme Gordon and registered with the U.S. Copyright Office in 2000. The resemblance between the two panda tales is at the heart of a copyright infringement suit filed against DreamWorks this year in federal district court in Boston by Gordon, represented by Fish & Richardson and Duane Morris. Gordon v. Dreamworks Animation SKG Inc., 1:11-cv-10255. As it happens, Gordon is just one of two artists suing the studio for copying the Kung Fu Panda character and concept. And while history shows that plaintiffs taking on Hollywood with such claims rarely succeed in court, at least some copyright experts believe that Gordon may be an exception.

“One generally assumes that these kinds of cases brought against movie studios are meritless, because they usually are,” says Barton Beebe, a professor of copyright law at New York University School of Law. “But as alleged, Gordon's facts are very strong.”

Others aren't so sure. “I think he probably has a strong enough case to get to discovery,” says Wendy Selzer, a fellow at Harvard Law School's Berkman Center. “But there needs to be more evidence of access and substantial similarity here.”

Unprotectable Elements?

Whether a court deems them substantial enough, Gordon's complaint notes a slew of similarities between the characters, plot elements and settings in his illustrated literary works and those made famous by the DreamWorks animated movie. Po, the portly panda with the passion for Chinese food voiced by Jack Black, is a virtual double for Kidd, the pot-bellied, pugilistic panda that Gordon first drew in the early 1990s. Both giant pandas befriend small red panda kung fu masters who use chopsticks while fighting, and both are aided by the same five fighting animals: a crane, a monkey, a mantis, a snake and a tiger. Then there's the setting. Portions of both the movie and Gordon's illustrated literary works take place in “The Valley of Peace,” a fictional land in ancient China.

Gordon further alleges that other Kung Fu Panda characters appear substantially similar to ones he created. For example, he claims, Po's father, a goose who owns a Chinese restaurant and wears chopsticks as a headpiece, evokes the Fortune Cookie character in his “Super Duck Super Duck” story, about a duck who also wears chopsticks on his head and owns a Chinese restaurant.

Such similarities may be striking, but they aren't necessarily enough for Gordon, who, along with his lawyers, declined to be interviewed, to prevail. To do that, he needs to show not just that DreamWorks copied from his work, but that it copied elements that are copyrightable. On that score, Beebe says, Gordon appears to have a strong case. “DreamWorks might try to argue that any elements common to Kung Fu Panda and Gordon's work are merely unprotectable ideas, scenes ' faire [i.e., standard plot or setting] or stock elements,” Beebe says. “But there are just too many similarities in the precise appearance of the characters, the details of their character development, and the setting of the action for [the studio] to succeed with this kind of argument.”

Jennifer Kuhn, a solo practitioner in Austin who specializes in intellectual property matters and has blogged about the case, says she was struck not just by what she called the “unusually high level of detail in the complaint,” but also by the evidence of the defendant's access to Gordon's work. “Fish & Richardson really did their due diligence,” Kuhn says. “It's not usual to find complaints with this much actual evidence. There is even a picture of the artist with Eisner.”

Kuhn is referring to a photocopy attached to the complaint that shows Gordon with then'Walt Disney Co. CEO Michael Eisner. Nothing about the picture conveys the context in which it was taken, but Gordon, who is shown wearing a Mickey Mouse T-shirt, said it was snapped after a meeting he had with Disney executives, including Eisner, at Walt Disney World in Orlando in the early 1990s. Gordon alleges that during that meeting, he was invited to send his illustrations to Disney, which he did. How does he make the leap from Disney to DreamWorks? By noting that Jeffrey Katzenberg, who now heads DreamWorks, was at the time one of Eisner's top lieutenants. Beyond that, Gordon contends that he also sent his work to DreamWorks in the late 1990s, and that he posted portions of his Kung Fu Panda Power portfolio online. (Eisner and Disney did not respond to requests for comment. DreamWorks declined to comment on ongoing litigation.)

Success Against Studios Is Rare

Gordon isn't the first to sue DreamWorks for infringement. The studio has previously defeated copyright claims over the movies Amistad, Disturbia and The Peacemaker. If he does win at trial ' or even overcomes a motion to dismiss on summary judgment ' he would be the rare copyright plaintiff to enjoy success against any Hollywood studio, according to Los Angeles entertainment lawyer Steven Lowe. In an article titled “Death of Copyright,” published in Los Angeles Lawyer in November 2010, Lowe found that of 48 copyright infringement cases brought against studios or networks in the last 20 years in federal district courts within the U.S. Court of Appeals for the Second and Ninth Circuits and that reached final judgment ' over such movies and TV shows as Groundhog Day, Jurassic Park and The Biggest Loser ' the defendants won every one. According to Lowe, only two copyright cases against studios or networks in the last two decades even reached a jury trial, and studio defendants won both. (The full article can be found at www.scribd.com/Death-of-Copyright-CIL/d/51819507.)

Why do plaintiffs have such difficulty pressing these copyright claims? Lowe argues that one factor is the increasing willingness of trial judges ' who traditionally relied on experts to perform extrinsic analyses of literary texts ' to decide issues of material fact on summary judgment themselves. Lowe notes that appellate courts are also getting more comfortable with trial judges exercising their own judgment. For instance, in its 2006 decision affirming a district court ruling on summary judgment for defendants in a copyright suit brought against Home Box Office over the funeral home drama Six Feet Under, the U.S. Court of Appeals for the Ninth Circuit did not take issue with the fact that “the district court conducted an independent analysis of [the works].” Funky Films Inc. v. Time Warner Entertainment Co. L.P., 462 F.3d 1072 (9th Cir. 2006). Similarly, in a case brought by a magician against Fox Broadcasting Co. for infringing his copyright by revealing in a home video how to perform several well-known magic tricks, the Ninth Circuit wrote that “the district court was well within its discretion in disregarding [the expert] testimony.” Rice v. Fox Broadcasting, 330 F.3d. 1170 (9th Cir. 2003).

Lowe also says that the concept of substantial similarity has become “virtually impossible to establish under recent case law.” He cites a Ninth Circuit decision last June in a copyright suit against Warner Bros. over The Last Samurai as an example. Benay v. Warner Bros. Entertainment Inc., 607 F.3d 620 (9th Cir. 2010). In that case, the plaintiff's screenplay and the defendant's movie both involved a U.S. war veteran traveling to Japan in the 1870s to train the Imperial Army in modern Western warfare to squelch a samurai uprising. The works shared the same title and involved violent action scenes set in some of the same places in Japan. In the end, the court's analysis ignored the classic selection and arrangement tests that an outside expert would apply, focusing instead on the ways in which the two works differed. The studio won.

Louis Petrich, a name partner at Leopold Petrich & Smith, whose Los Angeles entertainment firm has defended movie studios in many of the infringement cases Lowe analyzed, including the 2001 suit over The Peacemaker, has his own theory about why plaintiffs fare so poorly when taking on Hollywood. “The biggest fact,” he says, “is that here and around the country, judges are realizing that the question of 'substantial similarity of protected expression' is not a purely factual issue that needs a jury determination, but rather is at least a mixed legal and factual issue that judges may decide as a matter of law.”

Trying Contract Law

Kuhn says that the difficulty of establishing infringement in cases where authors and artists submit their works to studios has led her to counsel some clients to pursue contract causes of action instead. “I think it's easier to prove a contract violation than to prove copyright infringement,” Kuhn says. On the downside, plaintiffs in such cases must prove that the parties had established a relationship, and often cannot recover nearly as much as they might under federal copyright law, which allows for statutory damages.

That's the strategy being employed by Terence Dunn, the second plaintiff who claims that DreamWorks stole the idea for an animated film about what he describes in court documents as a “spiritually marked kung fu'fighting panda bear,” called Zen-Bear. Dunn, a kung fu master and writer who claims in his complaint to be “the originator of the first kung fu panda commercial products in America,” alleges the breach of an implied contract stemming from discussions about his ideas with DreamWorks development executives in 2001 and 2002. Dunn claims that he conceived of his Zen-Bear character and story as early as 1991, registered drawings of the panda in martial arts postures with the U.S. Copyright Office in 1993, and received trademark protection in 1998. He says that he then commissioned artists to design and sculpt prototypes of the panda and hired graphic designers to create a Zen-Bear logo and marketing materials, which he uses in connection with his tai chi website and instructional videos.

Without providing specific proof of having done so, Dunn claims he pitched his idea to DreamWorks for a movie about a panda who is trained by five kung fu'fighting animals ' a crane, a dragon, a leopard, a snake and a tiger ' to save the peaceful Plum Flower Village from an attack by evil animals. Dunn alleges that DreamWorks informed him in 2002 that it would not be using his concept but moved forward with his ideas anyway. His case, filed last June in a state court in Los Angeles, is now in discovery. Dunn v. Dreamworks Studios, BC438833. DreamWorks, represented by Loeb & Loeb, has denied all of Dunn's allegations and has pleaded a number of affirmative defenses, including that Dunn's complaint is barred by the statute of limitations and lack of privity.

As for Gordon, Kuhn says the mere fact that he got leading lawyers to take his case says something about its merits. “A lot of IP lawyers get a lot of calls like this and ignore them,” she says. “Fish & Richardson was right to take it seriously and put a lot of work into verifying Gordon's facts.” Still, it's too early to predict how the litigation will unfold. After all, even when it comes to dueling overweight pandas, few things in copyright law are ever black and white.

A paunchy panda with a taste for Chinese food and a dream of becoming a kung fu master walks into the restaurant where he works as a waiter. There, he meets up with his martial arts mentor, a small red panda wielding chopsticks as weapons. Soon, backed by five kung fu'fighting friends ' a crane, a mantis, a monkey, a snake and a tiger ' the panda is training to battle an evil animal antagonist to save the “Valley of Peace.”

Sounds familiar, right? Of course. It's the story of Po, the star of DreamWorks Animation's 2008 animated hit Kung Fu Panda, which grossed more than $630 million in box office sales worldwide and $100 million in DVD sales, and spawned a popular video game, an online virtual world and a potential blockbuster sequel set for release on May 26.

Actually, the story described above comes from the Kung Fu Panda Power Works collection created by illustrator Jayme Gordon and registered with the U.S. Copyright Office in 2000. The resemblance between the two panda tales is at the heart of a copyright infringement suit filed against DreamWorks this year in federal district court in Boston by Gordon, represented by Fish & Richardson and Duane Morris. Gordon v. Dreamworks Animation SKG Inc., 1:11-cv-10255. As it happens, Gordon is just one of two artists suing the studio for copying the Kung Fu Panda character and concept. And while history shows that plaintiffs taking on Hollywood with such claims rarely succeed in court, at least some copyright experts believe that Gordon may be an exception.

“One generally assumes that these kinds of cases brought against movie studios are meritless, because they usually are,” says Barton Beebe, a professor of copyright law at New York University School of Law. “But as alleged, Gordon's facts are very strong.”

Others aren't so sure. “I think he probably has a strong enough case to get to discovery,” says Wendy Selzer, a fellow at Harvard Law School's Berkman Center. “But there needs to be more evidence of access and substantial similarity here.”

Unprotectable Elements?

Whether a court deems them substantial enough, Gordon's complaint notes a slew of similarities between the characters, plot elements and settings in his illustrated literary works and those made famous by the DreamWorks animated movie. Po, the portly panda with the passion for Chinese food voiced by Jack Black, is a virtual double for Kidd, the pot-bellied, pugilistic panda that Gordon first drew in the early 1990s. Both giant pandas befriend small red panda kung fu masters who use chopsticks while fighting, and both are aided by the same five fighting animals: a crane, a monkey, a mantis, a snake and a tiger. Then there's the setting. Portions of both the movie and Gordon's illustrated literary works take place in “The Valley of Peace,” a fictional land in ancient China.

Gordon further alleges that other Kung Fu Panda characters appear substantially similar to ones he created. For example, he claims, Po's father, a goose who owns a Chinese restaurant and wears chopsticks as a headpiece, evokes the Fortune Cookie character in his “Super Duck Super Duck” story, about a duck who also wears chopsticks on his head and owns a Chinese restaurant.

Such similarities may be striking, but they aren't necessarily enough for Gordon, who, along with his lawyers, declined to be interviewed, to prevail. To do that, he needs to show not just that DreamWorks copied from his work, but that it copied elements that are copyrightable. On that score, Beebe says, Gordon appears to have a strong case. “DreamWorks might try to argue that any elements common to Kung Fu Panda and Gordon's work are merely unprotectable ideas, scenes ' faire [i.e., standard plot or setting] or stock elements,” Beebe says. “But there are just too many similarities in the precise appearance of the characters, the details of their character development, and the setting of the action for [the studio] to succeed with this kind of argument.”

Jennifer Kuhn, a solo practitioner in Austin who specializes in intellectual property matters and has blogged about the case, says she was struck not just by what she called the “unusually high level of detail in the complaint,” but also by the evidence of the defendant's access to Gordon's work. “Fish & Richardson really did their due diligence,” Kuhn says. “It's not usual to find complaints with this much actual evidence. There is even a picture of the artist with Eisner.”

Kuhn is referring to a photocopy attached to the complaint that shows Gordon with then'Walt Disney Co. CEO Michael Eisner. Nothing about the picture conveys the context in which it was taken, but Gordon, who is shown wearing a Mickey Mouse T-shirt, said it was snapped after a meeting he had with Disney executives, including Eisner, at Walt Disney World in Orlando in the early 1990s. Gordon alleges that during that meeting, he was invited to send his illustrations to Disney, which he did. How does he make the leap from Disney to DreamWorks? By noting that Jeffrey Katzenberg, who now heads DreamWorks, was at the time one of Eisner's top lieutenants. Beyond that, Gordon contends that he also sent his work to DreamWorks in the late 1990s, and that he posted portions of his Kung Fu Panda Power portfolio online. (Eisner and Disney did not respond to requests for comment. DreamWorks declined to comment on ongoing litigation.)

Success Against Studios Is Rare

Gordon isn't the first to sue DreamWorks for infringement. The studio has previously defeated copyright claims over the movies Amistad, Disturbia and The Peacemaker. If he does win at trial ' or even overcomes a motion to dismiss on summary judgment ' he would be the rare copyright plaintiff to enjoy success against any Hollywood studio, according to Los Angeles entertainment lawyer Steven Lowe. In an article titled “Death of Copyright,” published in Los Angeles Lawyer in November 2010, Lowe found that of 48 copyright infringement cases brought against studios or networks in the last 20 years in federal district courts within the U.S. Court of Appeals for the Second and Ninth Circuits and that reached final judgment ' over such movies and TV shows as Groundhog Day, Jurassic Park and The Biggest Loser ' the defendants won every one. According to Lowe, only two copyright cases against studios or networks in the last two decades even reached a jury trial, and studio defendants won both. (The full article can be found at www.scribd.com/Death-of-Copyright-CIL/d/51819507.)

Why do plaintiffs have such difficulty pressing these copyright claims? Lowe argues that one factor is the increasing willingness of trial judges ' who traditionally relied on experts to perform extrinsic analyses of literary texts ' to decide issues of material fact on summary judgment themselves. Lowe notes that appellate courts are also getting more comfortable with trial judges exercising their own judgment. For instance, in its 2006 decision affirming a district court ruling on summary judgment for defendants in a copyright suit brought against Home Box Office over the funeral home drama Six Feet Under, the U.S. Court of Appeals for the Ninth Circuit did not take issue with the fact that “the district court conducted an independent analysis of [the works].” Funky Films Inc. v. Time Warner Entertainment Co. L.P. , 462 F.3d 1072 (9th Cir. 2006). Similarly, in a case brought by a magician against Fox Broadcasting Co. for infringing his copyright by revealing in a home video how to perform several well-known magic tricks, the Ninth Circuit wrote that “the district court was well within its discretion in disregarding [the expert] testimony.” Rice v. Fox Broadcasting , 330 F.3d. 1170 (9th Cir. 2003).

Lowe also says that the concept of substantial similarity has become “virtually impossible to establish under recent case law.” He cites a Ninth Circuit decision last June in a copyright suit against Warner Bros. over The Last Samurai as an example. Benay v. Warner Bros. Entertainment Inc. , 607 F.3d 620 (9th Cir. 2010). In that case, the plaintiff's screenplay and the defendant's movie both involved a U.S. war veteran traveling to Japan in the 1870s to train the Imperial Army in modern Western warfare to squelch a samurai uprising. The works shared the same title and involved violent action scenes set in some of the same places in Japan. In the end, the court's analysis ignored the classic selection and arrangement tests that an outside expert would apply, focusing instead on the ways in which the two works differed. The studio won.

Louis Petrich, a name partner at Leopold Petrich & Smith, whose Los Angeles entertainment firm has defended movie studios in many of the infringement cases Lowe analyzed, including the 2001 suit over The Peacemaker, has his own theory about why plaintiffs fare so poorly when taking on Hollywood. “The biggest fact,” he says, “is that here and around the country, judges are realizing that the question of 'substantial similarity of protected expression' is not a purely factual issue that needs a jury determination, but rather is at least a mixed legal and factual issue that judges may decide as a matter of law.”

Trying Contract Law

Kuhn says that the difficulty of establishing infringement in cases where authors and artists submit their works to studios has led her to counsel some clients to pursue contract causes of action instead. “I think it's easier to prove a contract violation than to prove copyright infringement,” Kuhn says. On the downside, plaintiffs in such cases must prove that the parties had established a relationship, and often cannot recover nearly as much as they might under federal copyright law, which allows for statutory damages.

That's the strategy being employed by Terence Dunn, the second plaintiff who claims that DreamWorks stole the idea for an animated film about what he describes in court documents as a “spiritually marked kung fu'fighting panda bear,” called Zen-Bear. Dunn, a kung fu master and writer who claims in his complaint to be “the originator of the first kung fu panda commercial products in America,” alleges the breach of an implied contract stemming from discussions about his ideas with DreamWorks development executives in 2001 and 2002. Dunn claims that he conceived of his Zen-Bear character and story as early as 1991, registered drawings of the panda in martial arts postures with the U.S. Copyright Office in 1993, and received trademark protection in 1998. He says that he then commissioned artists to design and sculpt prototypes of the panda and hired graphic designers to create a Zen-Bear logo and marketing materials, which he uses in connection with his tai chi website and instructional videos.

Without providing specific proof of having done so, Dunn claims he pitched his idea to DreamWorks for a movie about a panda who is trained by five kung fu'fighting animals ' a crane, a dragon, a leopard, a snake and a tiger ' to save the peaceful Plum Flower Village from an attack by evil animals. Dunn alleges that DreamWorks informed him in 2002 that it would not be using his concept but moved forward with his ideas anyway. His case, filed last June in a state court in Los Angeles, is now in discovery. Dunn v. Dreamworks Studios, BC438833. DreamWorks, represented by Loeb & Loeb, has denied all of Dunn's allegations and has pleaded a number of affirmative defenses, including that Dunn's complaint is barred by the statute of limitations and lack of privity.

As for Gordon, Kuhn says the mere fact that he got leading lawyers to take his case says something about its merits. “A lot of IP lawyers get a lot of calls like this and ignore them,” she says. “Fish & Richardson was right to take it seriously and put a lot of work into verifying Gordon's facts.” Still, it's too early to predict how the litigation will unfold. After all, even when it comes to dueling overweight pandas, few things in copyright law are ever black and white.