The Copyright Act doesn’t preempt a lawsuit over the idea for the TV show Royal Pains, the U.S. Court of Appeals for the Second Circuit has ruled.
The Second Circuit thus joins the Ninth Circuit, which last year ruled that such idea theft claims against studios are not necessarily preempted. Seven other circuits have ruled that at least some contract claims involving the subject matter of copyright are not preempted.
Actor Hayden Christensen, his brother Tove and their production company, Forest Park Pictures, brought the case against Universal Television in July 2010, alleging breach of an implied contract. They claimed Universal Television created Royal Pains based on a concept they pitched to the defendant without compensating them.
According to the Second Circuit ruling, the plaintiffs pitched their idea by mail and then in person to Universal Television division USA Network. The plaintiffs claim they developed their idea in 2005 for a show called “Housecall,” about a “concierge” doctor who makes house calls on rich and famous patients in Malibu, Calif. The doctor switched to this practice structure “after being expelled from the medical community for treating patients who could not pay.” Forest Park submitted character biographies, themes and storylines to USA Network.
The parties’ communication stopped soon after the pitch. Four years later, USA Network aired Royal Pains, which portrays an emergency room doctor who takes up concierge medicine in the Hamptons after he is fired from a New York City hospital for treating a homeless man before a member of the hospital’s board.
Southern District Judge Colleen McMahon (See Profile) dismissed the case in May 2011.
“Plaintiffs’ breach-of-implied contract claim based on his alleged right to be compensated for the use of his idea for a television series is equivalent to the exclusive rights protected by copyright law and is therefore preempted by the Copyright Act,” she wrote in Forest Park Pictures v. Universal Television Networks, 10 Civ. 5168.
A unanimous panel of the circuit on June 26 vacated her dismissal and remanded the case for further proceedings.
Judge John Walker Jr. (See Profile) wrote the opinion in Forest Park Pictures v. Universal Television Network, 11-2011-cv, joined by Judges Debra Ann Livingston (See Profile) and Reena Raggi (See Profile).
The Second Circuit ruled that Forest Park’s claim is not preempted and that the plaintiffs pleaded an enforceable contract under California state law that survives a dismissal motion.
Walker wrote that preemption would require that the work is “within the subject matter of copyright” and the complaint seeks to vindicate a legal or equitable right equivalent to any rights within the general scope of copyright law.
He noted that there are several qualitative differences between the plaintiffs’ claim and a copyright violation claim. First, the Copyright Act does not give owners an express right for payment for the use of a work. Second, plaintiffs in contract cases must prove extra elements beyond use or copying. Third, a breach-of-contract claim “asserts rights only against the contractual counterparty, not the public at large,” Walker wrote.
Walker said that a “number of our sister circuits have accordingly concluded that at least some contract claims involving the subject matter of copyright do not contest rights that are the equivalent of rights under the Copyright Act, and thus are not preempted.” He cited rulings from the Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Eleventh and Federal circuits.
“The alleged contract does not simply require USA Network to honor Forest Park’s exclusive rights under the Copyright Act (assuming the material at issue to be copyrightable); it requires USA Network to pay for the use of Forest Park’s ideas. A claim for breach of a contract including a promise to pay is qualitatively different from a suit to vindicate a right included in the Copyright Act and is not subject to preemption,” Walker wrote.
Walker agreed with Forest Park that California law governs the contract for several reasons. He noted that the sole face-to-face meeting and Forest Park’s written and oral disclosure of its idea took place there; the proposed series was located there; and two out of the three plaintiffs are California residents. He also noted that California law allows an implied-in-fact contract with “an open price term to be filled in by industry standards.”
Walker wrote, “although Forest Park does not allege that it expressly conditioned disclosure on a promise of payment, the Complaint alleges facts that, if proven, would establish that USA Network knew or should have known such a condition was implied.”
“Because Forest Park has alleged an enforceable implied-in-fact contract including a promise of payment for the disclosure of its idea, its claim is not preempted by the Copyright Act and therefore the district court erred in dismissing the Complaint,” Walker concluded.
Forest Park’s lawyer, David Marek, a partner at New York-based Liddle & Robinson, said that it’s notable that the Second Circuit reached the same decision as the Ninth Circuit in its 2011 en banc ruling in Montz v. Pilgrim Films & Television, 649 F.3d 975, on the copyright preemption issue: “I do think these decisions give writers and other people who are creating things some measure of protection or at least an avenue to bring a claim if they feel their ideas are being used without them being compensated.”
The types of communication his client had with Universal Television are common in the TV industry, Marek said.
“Those communications, because they’re only ideas, are often not protected by the Copyright Act,” he said.
Neither NBC Universal Media nor Susan Weiner of NBC Universal Media, who argued the defendant’s case at the Second Circuit, responded to requests for comment.
Robert Penchina, a New York partner at Levine Sullivan Koch & Schulz, who also represented Universal Television, referred questions to his client.
@|Sheri Qualters, a reporter for The National Law Journal, an affiliate, can be contacted at firstname.lastname@example.org.