Sealing in the Juices While Sealing Out the Lawsuits

It’s sadly true that many copyright cases are garbage, and obviously so, even at a glance. In many circuits, fortunately, trial courts are permitted to subject copyright claims to a kind of smell test. Before the case even really gets going, the defendant may move to dismiss the case under “Rule 12(b)(6).” With this kind of a motion, the court assumes everything in the complaint is true, and limits itself to just what is in the complaint52Which strikes non-lawyers as profoundly weird. It’s like imagining we’re living in a parallel universe where everything is the same, except everything in this document is true.. This rule is a kind of filter, where hopeless lawsuits can be thrown out before the parties really start spending money.53Rule 12(b)(6) motions don’t just filter out “bad” lawsuits, but also lawsuits that are legitimately pushing the boundaries of the law. They ask: here are the facts; is this still actionable?
Most Rule 12(b)(6) motions fail because most lawyers can write a complaint well enough to avoid dismissal. You just have to make sure you allege facts that, if true, would have a decent chance of convincing a jury of your client’s claim. That one of your key allegations might rest on some shaky evidence is a problem for another time, so long as you have a good-faith basis that you’ll be able to prove the point.

Tests for “Substantial Similarity” Are Themselves Not Substantially Similar. How Ironic.

But in many circuits54By “circuit” I mean a U.S. Circuit Court of Appeal. There are twelve geographical circuits—circuits one through eleven, plus one for D.C.—which oversees appeals from U.S. trial courts in their territories, and one subject-matter circuit, the “Federal Circuit,” which handles, patent cases, claims against the U.S., and some other types of cases, no matter where they are filed. In theory, all circuits are equally binding on all U.S. (not state) trial courts, but in practice, trial courts only really feel bound by the rulings of their Circuit Court of Appeal, which can create “circuit splits,” in which the law is different from circuit to circuit. There are a lot of circuit splits in copyright law. copyright claims are a bit different. Most complaints attach both the copyrighted work and the allegedly infringing works, which incorporates both works into the complaint. This, in turn, gives the judge an opportunity to view, read or listen to the two works and compare them—in other words, make a determination that the two works are not “substantially similar.”
Substantial similarity is the test for whether two works infringe. For many, if not most, copyright cases, the copying is exact or nearly so, and there’s no question of infringement. But many cases are in grey area of “kinda similar.” Somewhat surprisingly, there is no single, agreed-upon test for determining substantial similarity.55This is one of those “circuit splits.” But what all courts agree on is that it’s a question of fact—and juries determine facts. Judge are supposed to be very careful about invading the jury’s role, and in these circumstances, the bar is a high one: the facts must such that no reasonable jury could possibly find for the plaintiff on that claim.56My torts professor used to say, somewhat jokingly, “The jury would have to be INSANE!” Well, the jury could also be biased, confused, napping during an important cross-examination…. In the copyright context, this means the judge can view/read/listen to the two works and, if they obviously lack substantial similarity, the judge can dismiss the case there and then. But if there’s even a decent chance a jury could find them substantially similar, the judge should let the case go forward.
That’s what happened in a case involving two commercials for competing hamburger restaurants, Culver Franchising System, Inc. v. Steak N Shake Inc. The court dismissed the claim for copyright infringement after viewing the two commercials, concluding that no reasonable juror could find them substantially similar.

Culver’s Hamburger Looks a Lot Better than its Lawsuit.

Here are the two commercials, which you can view for yourself:
First, the Culver “ButterBurger” Commercial:

Now, the Steak & Shake “Original Steakburger Commercial:

You can see what animated Culver’s suit. It has just put together a commercial that involves a butcher, earnestly discusses the quality of the meat, specifically points out the importance of marbling and the importance of searing the burger. Then, just seven months later, its great rival and competitor, Steak n Shake, produces a (shorter) commercial making the same points.57I’m going to be honest: the Culver hamburger looks a lot more delicious than the Steak n Shake one. It’s fairly obvious that Steak n Shake “copied” the Culver commercial. I mean “copied” in the legal sense: Steak n Shake was aware of the Culver commercial and set out to replicate at least some of its elements.
But copying is only half the battle. Not all copying is infringing. You’re allowed to copy all manner of things, most notably facts, ideas and “scènes à faire.” “Scènes à faire” means something along the lines of “scenes that must be done,” i.e., a scene that is almost obligatory for the genre. The term has been expanded in copyright law to include anything that’s in the artist’s/writer’s/programmer’s toolbox. For example, it might be a stock character: the boastful soldier, the wisecracking side-kick, the loyal moll. Or it might be a common three-barre chord. Or a conventional set of variables. A quick and dirty test for “scènes à faire” might be: if giving someone exclusive ownership of it would seriously hamper others in the same line of art, it’s a “scène à faire.” The point of copyright is to encourage creativity, not hamper it. Perhaps a better words for it would be “convention.”
Scènes à faire was the key component of Steak n Shake’s successful argument that Culver’s complaint hadn’t pled a claim for copyright infringement. Steak n Shake argued that, if you look at all the things the two commercials have in common, all of those are conventional and, therefore, not protectable. Once you throw those elements out, the two works are not substantially similar.
That’s not a remarkable argument. What was remarkable was that it was made at the beginning of the case, under Rule 12(b)(6). Substantial similarity is a classic jury question. The jury is supposed to look at the two works overall—“total concept and feel,” in the courts’ fairly useless preferred nomenclature—and make a gut-level determination whether they’re too similar. The reasoning is that, because the main danger of copyright infringement is market displacement—i.e., that sales of the infringing work will displace sales of the copyrighted work—jurors, who represent ordinary consumers, should be the ones to make the call. This is known as the “ordinary observer” test.
But what if there’s evidence that many the works’ common elements are not protectable? Are you supposed to filter those out? If so, then what does that do to this whole “total concept and feel” business? This is where the circuits begin to diverge.
Courts haven’t just struggled with this question; they’ve floundered. There’s no margin for error. Lean too far one way, and you’re protecting the unprotectable and impinging on free expression. Lean too far the other way, and you’ll constrain copyright protection to just near-literal copying.58Your mileage may vary, depending on how you prioritized free expression with property rights. In software cases, the courts have permitted wholesale filtering, under the “abstract-filtration-comparison” test, and sometimes that test is applied to other types of cases. Other courts imagine an especially discriminating “ordinary observer,” able to kind of filter out the unprotectable elements without really filtering them out. It’s kind of a mess.

Other Major Limitations on Rule 12(b)(6) Motions

It gets worse. Some courts think that scènes à faire is an affirmative defense, i.e., something that the defendant has the burden of proving. Normally, courts won’t grant Rule 12(b)(6) motions to dismiss based on affirmative defenses unless the plaintiff “pled itself into” the defense, i.e., it foolishly alleged facts that, if true, would amount to an affirmative defense.59The classic example is the statute of limitations, which is an affirmative defense. If the complaint alleges the date on which the plaintiff first became aware of the claim, and the lawsuit was filed too long after that date, then the plaintiff will have pled itself into the statute of limitations defense. This is why lawyers are careful about alleging dates in complaints. The way you normally prove scènes à faire is with experts who explain what is, and isn’t, conventional within a given industry. Some conventions, however, are obvious enough and within the jurors’ own experience—novels, movies, etc.—that you might rely on their common sense.
Oh, one more thing. You can combine a bunch of unprotectable elements into something protectable—known sometimes as “structure, sequence and organization.” Indeed, if you dissect creative works enough, you’ll always hit some level at which everything is unprotectable. Every song is made up of musical notes that no one owns individually but an author can own when combined in an original way. Every novel is made up of words that no one owns individually but an author can own if they tell an original story. Just because all the characters in my novel are unprotectable stock characters doesn’t mean my novel is unprotected. The key, however, is that my protection is limited to the combination and does not include the individual elements.
Add this all up, and you might be amazed that any Rule 12(b)(6) motion to dismiss could ever granted in a case like Culver Franchising v. Steak n Shake. How did Steak n Shake pull it off? For one thing, they were fortunate in the choice of forum. Many circuits practically don’t allow a determination of substantial similarity to be made on a Rule 12(b)(6). For example, the Eastern District of Michigan (which is in the Sixth Circuit) recently refused to dismiss under Rule 12(b)(6) a copyright suit against the TV show Empire, even though the court thought many of the alleged points of similarity were banal. But this case was filed in the Seventh Circuit, and the Seventh Circuit has been unusually willing to throw out copyright cases at the pleadings stage.

Lucky Number Seven

In Hobbs v. John, a songwriter sued Sir Elton John for copyright infringement involving John’s not-terribly-good-song “Nikita.” You see, the plaintiff had also written a song about falling in love with a Russian woman with an obviously Russian name, only in the plaintiff’s case, her name was “Natasha.”60Alas, his song made no mention of flying squirrels or moose, or even anyone named “Boris.” Besides the Russian connection, the plaintiff contended that the songs shared “a theme of impossible love between a Western man and a Communist woman during the Cold War”61Kids, go ask your parents about “the Cold War,” and, if necessary, about “communism.”; “references to events that never happened”; the woman’s “light eyes”; repetition of the woman’s name“; repetition of the word ”never“ and the phrases ”to hold you,“ ”I need you“ and ”you will never know”; the title consisting of the woman’s name; and the letter N at the beginning of the woman’s name and the letter A at the end. No musical elements were implicated.
Sir Elton moved to dismiss under Rule 12(b)(6), which was granted by the trial court. On appeal, the Seventh Circuit affirmed. It found that almost all of the elements the songs had in common were just ideas or themes. Everything else was just scènes à faire. It is, for example, fairly common to praise the color of eyes in a love song. And repeating a name or certain phrases is a common technique in songwriting. The court held that judges know enough about popular music to know that these were just conventions. This case didn’t just fail the smell test. It failed the laugh test.
Previous to Sir Elton’s lawsuit, it was Kanye West who got sued, in Peters v. West. The plaintiff had written a song called “Stronger,” which used Nietzsche’s famous phrase, “what does not kill me makes me stronger,” and made an “incongruous” reference to Kate Moss. He gave a copy of the song to an associate of Kanye West’s and was surprised with Kanye came out with his own song called “Stronger,” that also used a variant of the Nietzsche phase (“N-N-N-now th-th-that don’t kill me/ Can only make me stronger”), and made reference to Kate Moss. Oh, and both songs rhyme “stronger” with “wronger” and “longer.” As with Sir Elton, no musical elements were implicated.
The plaintiff has a pretty good access case against Kanye. That’s a lot of coincidences to explain away. But while coincidences can help prove access, they aren’t necessarily protectable. Here, the only common elements was a title, a well-known Nietzsche phrase, a triple rhyme, and Kate Moss. The district court dismissed the complaint on a Rule 12(b)(6) motion, finding each of these elements to be either mere ideas or scènes à faire, and the Seventh Circuit affirmed.

Rejected Sevenfold

Many courts would have denied these motions, reflexively, just on grounds that it’s too soon, and it’s not the judge’s job to make the determination. But the Seventh Circuit is more aggressive than most, and Steak n Shake’s lawyers knew this, I bet.62Good lawyers know—or can quickly ascertain—the predilections of their circuit. Still, the hamburger commercials had a good deal more in common than songs involved in the “Nikita” and “Stronger” cases. You can judge for yourself, but, according to the court, Culver pointed to seven similarities:

  1. the commercial opens with a butcher in a white uniform in a butcher shop;
  2. then, the company logo appears;
  3. the butcher describes the beef’s quality;
  4. three different cuts of beef are shown as the butcher identifies the cuts and describes how they are “well-marbled”;
  5. patties are grilled and flattened with a spatula as the griller describes how the cuts “come[] together,” using the words “sear” and “seal”;
  6. the burger is stacked and topped with cheese; and
  7. the commercial ends with a close-up of the completed burger before the company’s logo again appears.

The court held that each of these points of similarity is either an unprotectable idea or unprotectable scènes à faire. The butcher shop, the discussion of marbling, and the discussion of “searing” and “sealing” are just ideas. The butchers in question are just stock characters. Steak n Shake didn’t take a specific character of a butcher, but just the idea of a butcher: a guy in a white butcher’s apron, in a butcher shop, talking authoritatively about butcher things. Marbling is also just a concept. It’s a fact that certain cuts of meat have more marbling than others, and that marbled meat makes better hamburgers (because it permits the meat to be grilled without drying it out, as the marbled fat melts within the patty). And while searing doesn’t actual “seal” juices or flavor,63Searing is still a wonderful thing. It doesn’t so much “seal in” flavor as create flavor, through the Maillard reaction. But what is a commercial supposed to do? Give you a chemistry lesson on the Maillard reaction. This isn’t America’s Test Kitchens. that’s a common myth that belongs to everyone.
The rest of the commercial either flows naturally from these concepts—e.g., the butcher praising the quality of the meat, or showing the act of searing—or are normal features of any commercial—e.g., showing the product and the company logo at certain points.64The court didn’t mention this, but the technique used to cook the hamburgers are unprotectable facts. Steak n Shake can “take” that fact. What it can’t do—and what it didn’t do—was use the same creative choices, like camera angles, to show those facts.
We’re not done yet. If we stopped our analysis here, we’d be committing the legal error of dissection. A combination of unprotectable elements—the structure, sequence and organization—can itself be protectable. Culver itself argued that the “combination of dialogue, pacing, sequence, background, and other visual and expressive elements” was protectable. As the Seventh Circuit explained in Bucklew v. Hawkins:

Every expressive work can be decomposed into elements not themselves copyrightable— the cars in a car chase, the kiss in a love scene, the dive bombers in a movie about Pearl Harbor, or for that matter the letters of the alphabet in any written work. The presence of such elements obviously does not forfeit copyright protection of the work as a whole, but infringement cannot be found on the basis of such elements alone; it is the combination of elements, or particular novel twists given to them, that supply the minimal originality required for copyright protection.

In this case, however, the unprotectable elements don’t add up to anything protectable. Most commercials open somewhere. Like any other rhetorical argument, it has to set the premise—quality of the meat—and a conclusion—the quality of the hamburger. Many commercials naturally discuss the quality of their product, and many of those naturally base that on the quality of the product’s components.And many commercials will feature the quality of the product’s manufacture and construction. And commercials will normally feature their products. And many commercials will feature a logo at the beginning and/or the end of the commercial.
In other words, the structure, sequencing and organization of the commercial is itself an unprotectable scène à faire: it’s just a normal, natural way to promote your hamburgers.65The court’s analysis of this issue is strange. First of all, it doubts whether the structure, sequence and organization of a work can be protectable, saying that the Seventh Circuit hasn’t ruled on that question. This is surprising because it’s a VERY basic concept in copyright law. It’s also implicit in the Seventh Circuit decision Bucklew v. Hawkins, and is found in every copyright treatise. Second, the court appears to think that, to be protectable, the arrangement must be “unique.” Uniqueness is never the standard for protectability. Originality is, and it’s a low bar. Nevertheless, the court assumes the theory is valid and hits upon the correct reason why Culver’s argument fails: “[B]oth advertisements—from the description of the beef’s quality to the grilling and assembling of the burger—are fairly standard in the fast food industry.” Is it a coincidence that Steak N Shake has a commercial with a structure and themes similar to those of the Culver commercial so soon after the Culver commercial aired? Probably not. But that doesn’t add up to copyright infringement. You can take things from copyrighted works to use in your works. You can take facts, ideas and scènes à faire. You can even do it deliberately—if you’re careful.

Narrow Circumstances (and Still Rare)

If that were all, then this would just be a great way to learn about scènes à faire and the idea-expression dichotomy. But what makes this decision remarkable is the stage at which it occurred: at the beginning of the case. Many courts wouldn’t grant this Rule 12(b)(6) motion, requiring at least some evidence about what is and isn’t normal in television commercials (i.e., proving up the scènes à faire defense). But, before we get too excited, or too worried that legitimate copyright claims will be dismissed without even a chance to prove the case, consider the circumstances under which this otherwise remarkable decision was made:

  • The alleged points of similarity could be articulated and identified based on the complaint; and
  • All, or nearly all, of those alleged points of similarity were obviously unprotectable—including high-level structures, sequences and organizations; and
  • No specialized industry knowledge was required, i.e., the works at issue were consumer-oriented.

Thus, the court did not need not usurp the role of the jury in making the “total concept and feel” determination, because once the points of similarity are considered and thrown out, there’s nothing left to compare. Further, because no specialized knowledge was required, the judge was no better or worse positioned to determine protectability than a jury.
It’s crucial, though, that the judge not substitute his or her own tastes for the jury. If the judge can’t throw out all points of similarity, including high-level ones, based on common knowledge, the case should be permitted to go forward.

When a Judge’s Analysis Is as Sloppy as “My Slushy”

The risk is real, because judges do sometimes substitute their own taste for the jury’s, then come up with “analysis” that supports their preferred result. In Gottwald v. Jones, the well-known producer Dr. Luke brought a declaratory judgment action against a songwriter who claimed that Kesha’s “TiK ToK” infringed on her song66There are some seriously reprehensible aspects to this case, which you can see by reading the complaint. Dr. Luke also sought to prevent the defendant songwriter from even claiming that Dr. Luke infringed her case by bringing a defamation claim against her. And he sought to stop her from making her case to the public by bringing a claim for direct copyright infringement because she was uploading portions of “TiK ToK” to YouTube in support of her argument that Dr. Luke “jacked” her song. This is obviously fair use., “My Slushy.” Someone helpfully spliced the two together so you can easily compare them. In my mind, it is at least a jury question whether those two songs (musical compositions) are substantially similar. It would require some expert testimony to help us filter out what is scènes à faire for this genre of music. Judges and jurors are familiar with popular music, but they will have difficulty articulating and identifying musical elements.
The defendants filed a compulsory counterclaim for copyright infringement, and Dr. Luke and company filed a Rule 12(b)(6) Motion to Dismiss. Since recordings of both songs were filed with the pleadings, the judge listened to both songs and dismissed the case: no reasonable jury could ever find the two substantially similar, she held. She based her ruling on the following musical analysis:

The music of the two works is not at all similar. Although both works incorporate women performing in a “sing-song” type of voice, “My Slushy” is in the major key and has an unmistakably brighter feel and tone, colored by its use of background chords performed on acoustic guitar. In stark contrast, “Tik Tok” has a much darker feel and tone (reflecting use of the minor), more related to dance or “dance-pop” music. The two “melodies” (to the extent that a melody can be said to be a feature of this type of “music”) sound nothing alike. The two songs share the same rhythmic pulse, but this is not copyrightable.

Space does not permit an analysis of all the ways this analysis is wrong. First, the judge bases her analysis on performance elements, rather than compositional elements, e.g., the “sing-song” style of singing, the choice of acoustic guitar. Recorded music has two potential copyrights: one in the composition (the lyrics and music) and another in the sound recording, i.e., the style and interpretive ability of the musicianship67And maybe some other things like sound mixing and engineering. It is a cardinal copyright sin to mix these up.
Second, she bases her analysis on the “tone” of the music. By her logic, if I flat-out stole your song but made it “dark” or transposed it to the minor key or turned it into “dance-pop” music, I would not have infringed your song. Third, she confidently states that the “melodies … sound nothing alike,” which is a conclusion, not analysis. Finally, she betrays contempt for the genre of music at issue. It’s as though this “type” of music could never have copyright protection because it’s barely “music” to the judge.68This order was never appealed. Faced with a separate claim for defamation by Dr. Luke, the songwriter ended up throwing in the towel, even agreeing never to even assert that Dr. Luke “jacked” her song. Aggressive, effective lawyering by Dr. Luke overwhelmed a much smaller party. At least her lawyer would go on to some success later….
But the main flaw in the judge’s analysis is that all she’s doing is substituting her opinion for the jury’s. She doesn’t bother to identify and articulate any points of similarity. She just says there aren’t any. Reasonable minds can differ on this point (listen again). This is almost precisely why we have juries, so the idiosyncrasies of a single judge don’t prevail, but rather the consensus of twelve ordinary people.

It’s Nice That You Won, But…

It’s nice that, sometimes, you can get rid of an obviously flawed lawsuit at the very early stages with a Rule 12(b)(6) motion to dismiss, before one has expended much money. But this only serves to hide the fundamental problem: justice is far too expensive. And Rule 12(b)(6) motions are hardly a panacea for this problem. They only apply in just the right situations—and sometimes apply when they shouldn’t. Also, they’re not favored everywhere. More important, they cost money, and they don’t always work. Those most in need of them might well be unwilling to risk a good chunk of their litigation budget on one. Steak N Shake is a fairly large company. It could afford to hire lawyers good enough and experienced enough to accurately assess the likelihood of success, pay them enough to prepare a strong motion, and afford the risk that it might not work.
Again, the decision is in the case Culver Franchising System v. Steak N Shake (N.D. Ill. Aug. 5, 2016).
Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.