On September 20, 2012, the District Court for the Eastern District of Missouri, in Harter v. Disney Enterprises, Inc., No. 11-2207 (E.D. Mo. 2012), dismissed a copyright infringement lawsuit that claimed Disney stole the idea behind its direct-to-DVD movies about a dog who helps Santa Claus save Christmas.
In 1991, Ray Harter, Jr., Richard Kearney, and Ed Corno (collectively, the “Authors”) wrote an illustrated children’s story, titled “Santa Paws” and alternatively “Christmas Paws”. In 2009 and 2010, Disney released two straight to DVD movies titled “Santa Buddies: The Legend of Santa Paws” and “The Search for Santa Paws” respectively. In 2011, the Authors filed a copyright infringement claim against Disney, breach of fiduciary duty and negligence claims against the Authors’ agents, William Morris Endeavor Entertainment, LLC (“WME”), John Ferriter and Barry Jeffery, and a civil conspiracy claim against all Defendants. The Authors later voluntarily dismissed Ferriter and Jeffery from the action and the Court granted WME’s motion to dismiss for lack of jurisdiction, leaving only the copyright infringement and civil conspiracy claims against Disney. Disney moved to dismiss the copyright infringement and civil conspiracy claims. The Court converted Disney’s motion to dismiss into a summary judgment motion, which was the subject of the Court’s opinion.
The Authors’ copyright infringement claim alleged that Disney’s movies included instances of verbatim and nearly verbatim lines of dialogue, as well as similar uses of a magical icicle and magical Christmas tree, and also featured a female villain intent on destroying Christmas. Disney conceded access to the works for the purposes of the motion, leaving the Court to determine whether the works were substantially similar. In determining whether the works were substantially similar, the Court applied the Eighth Circuit’s “extrinsic/intrinsic” test for analyzing similarity between works. The extrinsic portion of the test measures whether there are objective similarities in the details of the works. If the extrinsic test is met, the Court will apply the intrinsic test, which measures similarity of expression based on the response of the ordinary, reasonable person to the forms of expression. In considering whether there were objective similarities of ideas, the Court looked to the Ninth Circuit factors — plot, themes, dialogue, mood, setting, pace, characters and sequence of events – to compare the works. The Court looked to the Ninth Circuit because the Eighth Circuit did not have its own factors to analyze literary and dramatic works and had adopted the general framework for their extrinsic and intrinsic tests from the Ninth Circuit.
While the Court acknowledged that the short story and the Disney movies had some elements in common: i.e., a threat to Christmas, a talking dog named Paws, magical icicles, an evil witch, and an interactive Christmas tree, ultimately it found that “the remaining elements of the plaintiffs’ short story and defendants’ movies are substantially dissimilar.” The Court agreed with Disney that the presence of Santa, elves, and their helpers and the setting of the North Pole are mere scenes a faire and that the general plot idea of a threat to Christmas and a talking dog who helps save Christmas is not protectable. Because the Court concluded there was no substantial similarity of ideas between the works, the Court did not conduct an intrinsic analysis of the works. The Court did, however, point out that even if there were substantial similarity of ideas between the works, the Authors’ claim would still fail under the intrinsic test because no reasonable viewer of the Disney movies would recognize them as a dramatization of the Authors’ short story. Because the civil conspiracy cause of action was dependent on finding liability on the copyright infringement claim, that claim was dismissed as well.
This case is yet another reminder of the difficulty of proving substantial similarity with respect to written works. Too often eager plaintiffs rely on similarities in general plot ideas, stock characters and themes to make out a claim of copyright infringement, without taking into account whether there are substantial similarities in actual protectable expression.