California Law Protects Where Copyright Doesn’t

February 25, 2011


Neil J. Rosini, Michael I. Rudell

Why creators of "The Last Samurai" may be liable for breach of implied-in-fact contract - not copyright.

(Originally published in the Entertainment Law column in the New York Law Journal on Friday, February 25, 2011)

Proposals for films and television productions are frequently “pitched” (in industry parlance) to studios, networks, and producers. The one making the pitch usually expects the recipient to hold the submission in confidence and to enter into an agreement covering compensation, ownership, control, credit, services, and other key business points before making use of the proffered story or concept. The recipient usually knows of that expectation, even without an express contact that governs the submission.1

Still, it is not unknown for a potential purchaser to “pass” on a pitch, make no deal, and then use the story or concept – or a substantial part of it – without permission. If a plaintiff alleges that a direct recipient of a pitch stole from it, then proving access would not be difficult. And under certain circumstances, actual use by the defendant will be presumed.2 But to succeed in an action, the plaintiff also must show a legally-cognizable level of similarity between the submission and the defendant’s work. Not just any similarity will suffice, whether the claim is for copyright infringement or breach of an implied-in-fact contract.3 But what level of similarity is needed to sustain a claim and is that level different in a copyright context compared to an implied-in-fact contract analysis?

Because so many film and television pitches are made to studios and networks located in California, it’s useful to know the standards that apply there, and the Ninth Circuit had occasion to lay them out in Benay v. Warner Bros. Entertainment, Inc. et al., 607 F.3d. 620 (9th Cir. 2010). In that case, the plaintiffs alleged unlawful copying of their script by the creators of the 2003 theatrical motion picture, “The Last Samurai,” starring Tom Cruise. On the defendants’ motion for summary judgment, the Court held that the level of similarity was insufficient to support a copyright claim but enough for the implied-in-fact contract claim to proceed, which required at a minimum a very different kind of similarity.

The Benay Facts

The plaintiffs were two brothers who wrote and registered for copyright a screenplay they called “The Last Samurai.” Their agent pitched the screenplay to the president of production at Bedford Falls Productions with the “implicit understanding” that if it were used by them to produce a film, the plaintiffs would be “appropriately compensated.” Citing a similar project in development, the production company turned the proposal down; but three years later a film also named “The Last Samurai” came out, which was produced by Bedford Falls among others.

The brothers sued the producers and the film’s credited writers asserting (among other theories4) both copyright infringement under federal law and breach of implied-in-fact contract under California law. The defendants contended that the film was developed independently of the plaintiffs’ screenplay and they won summary judgment in the district court on both claims. On appeal, the Court’s analysis of the copyright and breach of implied-in-fact contract claims was fact-intensive. It began with a comparison of the plaintiffs’ screenplay and the defendants’ film, which were “similar in some respects and dissimilar in others.”

In the plaintiffs’ screenplay, the protagonist is James Gamble, “a successful West Point professor with a beautiful wife and five-year-old son.” He travels to Japan at the request of President Grant, who earlier saved Gamble’s career “after he accidentally killed eight of his own men during the Civil War.” Gamble undertakes to train and lead the Japanese Imperial Army, which defeats the samurai in his first battle. But a full samurai rebellion ensues led by one Saigo, whose attack on a Christian church service kills Gamble’s young son. This death leads Gamble to attack Saigo, resulting in a devastating loss for the Imperial Army. Gamble “falls into an opium-aided stupor” in which he is haunted by “his failure, his mistake during the Civil War, and the death of his son.” Eventually, his wife and a female samurai warrior named Masako pull Gamble out of his funk and — for the remainder of the screenplay — Gamble exacts revenge through a series of battles between the Imperial Army and the samurai rebels. Gamble kills Saigo by sword with Masako’s help, but she dies in the fight. Gamble returns to the United States where he resides in a Japanese-style house with his wife and a newborn child named Masako.

In the defendants’ film, the protagonist is Nathan Algren, “an unmarried alcoholic.” He is “haunted by his role in an attack on an innocent tribe during the Indian Campaigns” and has just been fired from a job selling rifles when he is recruited by his former commander to train the Japanese Imperial Army in modern warfare, as a mercenary. In a “disastrous” first battle, Algren is captured by the samurai and while in captivity, is exposed to their traditional culture. In time, he switches allegiances. He “bonds” with Katsumoto, the leader of the samurai rebellion, and falls in love with Taka, who had been married to a samurai that Algren killed while fighting for the Imperial Army. Algren “assimilates into a samurai village” and eventually joins the samurai “in a final futile battle against the modernized Imperial Army.” After the defeat, Algren confronts the young Japanese Emperor and “teaches him the value of traditional samurai culture” before returning to the samurai village to live with Taka.

The Court took note that prior to the submission of the plaintiffs’ screenplay to Bedford Falls, two of the writer-defendants had been working on a screenplay about a Civil War veteran who “joins a samurai and helps him lead a cattle drive in Japan.” Their screenplay, called “West of the Rising Sun,” differed from the defendants’ film “The Last Samurai” in two important respects. First, the Civil War veteran in the film was no longer the “transplanted American cowboy helping to lead a cattle drive” that he was in the writer-defendants’ screenplay; in the film he had become a military expert called upon to modernize the Japanese Imperial Army, as he was in the plaintiffs’ screenplay. Second, instead of going to Japan to work side-by-side with the samurai, as in the writer-defendants’ screenplay, the American in the film goes to fight the samurai, as in the plaintiffs’ screenplay.

Copyright Analysis

To prevail on their copyright claim, the plaintiffs needed to prove ownership of a valid copyright, access by the defendants to the plaintiffs’ work, copying, and substantial similarity between protected elements of the screenplay and comparable elements of the film.5 But only the last issue of substantial similarity was before the Court on appeal, so it undertook an “objective comparison of specific expressive elements” which is known in the Ninth Circuit as the “extrinsic test.”6

In applying the test, the Court looked to “articulable similarities between the plot, themes, dialogue, mood, setting, pace, characters, and sequence of events in two works,” taking care to inquire “only whether the protect[able] elements, standing alone, are substantially similar.” The Court noted that copyright law protects only expression of ideas – not the ideas themselves – and that “[f]amiliar stock scenes and themes” that are the “staples of literature” as well as “situations and incidents that flow necessarily or naturally from a basic plot premise,” cannot support a finding of infringement. Further, historical facts are not protected under copyright. With respect to the plaintiffs’ burden of proof respecting similarities, the Court assumed that the defendants had access to the plaintiffs’ work, which reduced that burden.

The similarities were not minor. The Court observed that both the plaintiffs’ screenplay and the defendants’ film had identical titles; they shared the “historically unfounded premise” of an American war veteran who assists the Japanese Imperial Army by training it in modern Western military techniques for its fight against a samurai uprising; both protagonists were authors of non-fiction studies on war and experience flashbacks to battles in America; both stories included meetings with the Japanese Emperor and numerous battle scenes; both were “reverential toward Japanese culture”; in both, the leader of samurai rebellion is “an important foil to the protagonist”; and the American protagonist in both was “spiritually transformed by his experience in Japan.”

Despite these similarities, the Court found “many more differences than similarities” between the plaintiffs’ screenplay and defendants’ film, and that the most important similarities involved elements that copyright did not protect. These included “shared historical facts, familiar stock scenes, and characteristics that flow naturally from the works’ shared basic plot premise.” The stories were “very different,” the plaintiffs’ screenplay being “largely a revenge story” and the defendants’ film “more a captivity narrative” reminiscent of “Dances with Wolves” in some respects (agreeing with the district court). A samurai uprising in the 1870s actually occurred, and the Court found it unsurprising that a “Hollywood film about the rebellion would insert an American character.”

The Court held that similarities between characters in the two works were “either derived from historical facts or are traits that flow naturally from the works’ shared premises.” The difference between the two American protagonists “at least equal the similarities” and the leader of the samurai rebellion was based on an historical figure and not protected by copyright. Moreover, the Saigo in the screenplay was a “treacherous and ruthless warlord” but the film’s Katsumoto was an “honorable and spiritual samurai.” The works presented the Japanese Emperor in different ways and a number of important characters in each work had no obvious parallel in the other.

Thematically, both works explored general themes of “the embittered war veteran, the ‘fish-out-of-water,’ and the clash between modernization and traditions” (quoting the district court). But the shared themes rose naturally from the premise of an American war veteran who travels to Japan to fight the samurai and the works developed those themes in different ways. The plaintiffs’ work characterized the samurai as part of a feudal class system and was largely positive about the role played by Westerners in modernizing Japan. The defendants’ film was ambivalent about modernization and “nostalgic for disappearing Japanese traditions” like the samurai way of life.

Each of the works “shared certain settings,” but because they all flowed naturally from the works’ “shared unprotected premise,” they were disregarded. Other settings were “strikingly dissimilar,” such as the American settings in the two works. Further, the screenplay included scenes in samurai castles and an opium den, not in the film; the film included scenes in a samurai village, not in the screenplay. The works also differed in mood and pace. The screenplay had a “triumphant mood” and a fast paced story of adventure and intrigue. The film was more “nostalgic and reflective” with “leisurely sequences” in addition to battle scenes. The pacing of the two works also differed in that the screenplay jumped from battle to battle and the film lingered in a “long period of relative calm” while Algren was held captive in the samurai village.

The dialog in the two works had “limited similarities” some of which flowed naturally from the premise of an American military advisor in Japan. But there were significant differences in dialog, including the use in the film of substantial exchanges in Japanese. And although identical titles may be a factor in establishing an infringement claim, the historical figure, Saigo Takamuri, on whom much of the film was based, is sometimes referred to as “the last samurai,” leading the Court to find that the significance of the shared title was “insufficient to overcome the overall the lack of similarities between protected elements of the works.”

The Court determined that the district court was correct in granting summary judgment to the defendants on the plaintiffs’ copyright claim.

California Law

Addressing the plaintiff’s claim of an implied-in-fact contract under California law, the Court first observed that contract claims for protection of ideas were not preempted by copyright law because they “allege an ‘extra element’ that changes the nature of the action” — namely the agreement that the defendant will pay for use of the plaintiffs’ ideas. But the plaintiffs still had to show defendants’ use of their property. On their motion for summary judgment, the defendants argued (among other defenses) that their film was so lacking in substantial similarity to the plaintiffs’ screenplay, that as a matter of California contract law, the plaintiffs could not prove that their screenplay had been used by the defendants.7

The Court agreed that when a contract is implied-in-fact, the “weight of California authority” requires “substantial similarity” between the plaintiffs’ idea and the defendants’ use. But the Court distinguished the level of substantial similarity required under copyright law from the level required in idea-submission cases under California contract law: in the latter, unauthorized use can be shown by substantially similar elements that copyright law does not protect.

The Court referred to the similarities between the screenplay and the film: “Most notably, in both works, the protagonist is an embittered American war veteran who travels to Japan where he meets the Emperor, trains the Imperial Army in modern warfare, fights against the samurai, and in the end is spiritually restored.” Moreover, both works were set in the time of the Satsuma Rebellion of 1877, both relied heavily on the historical Saigo Takamori, and both had the same title. The Court held that although these similarities failed to satisfy the substantial similarity test under copyright law, they were sufficient to support “actual use” by the defendants in an implied-in-fact contract action under California law, if the defendants in fact copied from the plaintiffs. The Court remanded the claim to the district court to determine whether there was “evidence in the record from which a reasonable fact-finder could find unauthorized use” by the defendants of the plaintiffs’ work through access and copying.


Although there are differences between California law and New York law regarding submissions of creative work (which lie beyond the scope of this article), the lessons to be drawn from Benay by those making submissions are universal and, to an extent, may seem obvious.

Keeping good records of the dates of submissions, copies of the material submitted and cover letters, and all correspondence from recipients, is key. Cover letters should state expectations of confidentiality and compensation prior to use, especially if the parties do not have an established course of dealing. It’s also advisable, when possible, to direct submissions to people one knows or one’s representative knows. Using an agent, or an entertainment lawyer, can also be helpful not only because their submissions are more likely to be reviewed (without a release of claims—see footnote 1), but also because of their familiarity with the process. Lastly, a submission with considerable detail (like the submission in Benay), is more likely to afford legal protection whether the basis of a claim is copyright infringement or breach of implied contract.

And if unauthorized use is alleged when access, privity, and substantial similarities are present, then breach of an implied-in-fact contract may be established even though copyright infringement cannot.


1 Studios, networks, producers and publishers often require the proposing party to sign a release of claims in advance of the disclosure, ostensibly to protect themselves should the idea not be new to them or should it come to them later by independent means. The release is often waived, however, when the submission comes through a professional representative familiar to the recipient, such as an agent or entertainment attorney. This article does not address the situation in which a waiver of claims has been signed.

2 Actual use may be inferred in a copyright action if the degree of similarity is sufficiently high (see, 4 Nimmer on Copyright, §19D.07[C] [1]-[2]). A similar inference is permitted under California contract law (see note 7 below); both inferences are rebuttable.

3 In the case of express contracts, the threshold of actionable use depends on the terms of the contract, such as when payment is required for “basing” a work on the submitted work. The Court in Benay cited authorities to the effect that a recipient of a proposal could agree expressly to pay for any use no matter how slight or commonplace, thereby obviating the need for an analysis of substantial similarity.

4 The plaintiffs’ theories other than copyright infringement and breach of implied-in-fact contract were not addressed on appeal.

5 Citations in the Court’s opinion are omitted throughout this article.

6 Owing to the Ninth Circuit’s two-part test for determining whether one work is substantially similar to another, the plaintiffs needed to prove their case using the “extrinsic test” as well as an “intrinsic test.” The latter is a “subjective comparison that focuses on ‘whether the ordinary, reasonable audience’ would find the works substantially similar in the ‘total concept and feel of the works.’” On a motion for summary judgment, the Ninth Circuit applies only the extrinsic test, leaving the intrinsic test to the trier of fact.

7 In addition to “substantial similarity” sufficient to demonstrate the defendants’ actual use of their screenplay, the plaintiffs had to show the following to establish an implied-in-fact contract under California law: that they submitted the screenplay to defendants, they conditioned the use of the screenplay on payment; the defendants knew or should have known of the condition; the defendants voluntarily accepted the screenplay; and the screenplay had value. Novelty is not required in California for an enforceable implied-in-fact contract.