BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal on Friday, April 26, 2013)
Historical facts are the essence of fictionalized “true stories” as well as non-fiction historical accounts. But authors who dip into the bowl of history to prepare their own creative works must accept that facts are not protectible under copyright. This exclusion applies equally to the facts in a fictionalized or fictional narrative as well as to non-fiction history.
Actress-producer-writer Emma Thompson knows this principle well. She wrote the screenplay for a film named Effie about John Ruskin and John Everett Millais, “stars of the Victorian art world,” and their relationships with Euphemia (“Effie”) Gray, the “intriguing woman” who was married to each of them. Ms. Thompson assigned the copyright to her screenplay to Effie Film, LLC, (“EFL”), which produced a film based on it featuring Dakota Fanning, Robbie Coltrane and herself. The film, which has not yet been released, gave rise to litigation even before it was fully financed.
A writer, Gregory Murphy, wrote both a screenplay and a stage play based on the same historical events. He claimed that Effieinfringed his works and threatened Ms. Thompson and EFL with legal action. EFL sued him first for a declaration of non-infringement and subsequently moved for judgment on the pleadings. On March 22, its motion was granted.
And that was not the only recent decision concerning Effie and others’ copyrights. A writer, Eve Pomerance, also known as Eve Mossek, wrote two screenplays about the same historical figures and also threatened Effie‘s producers with a suit for copyright infringement. EFL brought an action against her, too, for a declaration of non-infringement and won its motion for judgment on the pleadings four months ago.
Both actions were brought by EFL in the Southern District of New York. Judge J. Paul Oetken wrote the first decision and Judge Thomas Griesa wrote the second. Together they afford a grand tour of copyright as it applies to historical fact and fiction based on it, but because of space limitations and to avoid repetition, only Judge Oetken’s 61-page exposition of history and copyright will be discussed here.
History and Copyright
It might seem a remarkable coincidence that four relatively recent screenplays and a play by three different authors would be based on the same story. They represent just the tip, however, of an authorial iceberg. Judge Oetken’s decision listed a 2011 non-fiction book, a 1995 opera, a 1979 novel, a collection of formerly unpublished letters (1948) and a 1912 silent film, as mere examples of the considerable attention paid to these “dramatic and intertwined lives” by authors, composers, dramatists and scholars across generations.
Their story in a nutshell is this: Ruskin and Effie meet at an early age. Effie marries Ruskin, by then a preeminent art critic. He refuses to consummate the marriage and their life together becomes increasingly grim. Effie meets the great painter Millais, a friend of Ruskin’s. They are mutually attracted. After Effie escapes Ruskin, a doctor’s examination confirms her virginity. She obtains an annulment and later marries Millais.
The issues in the lawsuit relate primarily to the protection afforded by copyright to the respective authors’ selection and expression of factual and fictional details in their accounts. But the starting point for the court is more fundamental: to what degree should copyright – which protects only original works of authorship and not facts — protect an historian’s work? This examination comprises much of the court’s decision.
Judge Oetken quotes from scholars who argue that history “involves a deeply subjective, contested, and imaginative process that requires the creation of value-laden narratives purporting to represent a lost world” rather than a set of “objective and discoverable truths.” They regard historical facts and interpretations as the products of “deliberate, ‘imaginative’ creation of a coherence that exists only by virtue of the historian” and reject treating “the imaginative mortar of an historical theory or interpretation” as if it “merged with the facts themselves.” They consider any other approach to the “historical enterprise” to be outdated and discredited. This includes the one adopted by the Second Circuit in Hoehling v. Universal City Studios, Inc. 618 F.2d 972 (2d Cir. 1980), which held that historical fact and interpretation were not protectible as a matter of law.
In Hoehling, A.A. Hoehling, an author of an historical account of the destruction of the Hindenburg brought an action for copyright infringement against another author and a movie studio that created fictionalized accounts of the story. In particular, the plaintiff’s ire was aroused by the defendants’ adoption of his theory that a particular crew member started the fire which destroyed the zeppelin. In rejecting the claim, the Second Circuit ruled that “the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis.” It cited the following rationale: “the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past.” As a result, “the scope of copyright in historical accounts is narrow indeed, embracing no more than the author’s original expression of particular facts and theories already in the public domain.” In Hoehling’s case, once the unprotectible facts and interpretations were filtered out, no infringement could be found.
In Judge Oetken’s decision, Hoehling is not primarily about “historians’ lack of creativity” – as its critics would urge – but rather “the unique importance of maintaining a free flow of accessible historical information.” According to the court’s decision,Hoehling‘s goal is to facilitate the creation and dissemination of new historical knowledge by avoiding a “chilling effect on authors who contemplate tackling an historical issue or event.” Historical accounts therefore are afforded “weak copyright protection” that is limited to “original expression” of facts and interpretations.
Moreover, as Judge Oetken observes, history is different from other writing: creativity in history may be comparable to the creative process of generating fiction, but “is arguably of a different sort by virtue of historians’ goal of accurately representing past reality and the shared professional norms that discipline factual and interpretative adventurousness.” Such differences “may justify different treatment of originality doctrine with respect to historical facts and interpretation.” Besides, as Judge Oetken notes, academics have professional, personal and financial motivation to “generate new historical information even in the absence of strong copyright protections.” Society may gain more benefit from the weak copyright protection given historical narratives rather than more.
In any event, to the extent the Hoehling approach undervalues the considerable effort expended by historians in compiling historical works and thereby reduces the economic incentive to write them, that objection was largely dispatched by the U.S. Supreme Court in Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991). In Feist, the Court held that because facts are discovered rather than created, they do not “owe their origin to an act of authorship” — and copyright protects only original works of authorship.
While placing individual facts beyond the bounds of copyright protection, Feist also underscored that copyright protects compilations of facts. They “may possess the requisite originality” because the author “typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers.” The Feistdecision was about telephone listings: white pages, which merely follow alphabetical order, contain nothing creative or original and get no protection; yellow pages, with selective compilations of listings in select categories are eligible. Even that protection, however, was characterized by the Supreme Court as “thin,” as it is limited to the “same selection and arrangement” of facts.
The Infringement Test
After Hoehling and Feist, protection for both non-fiction and fictionalized historical accounts is not robust and it’s limited to the expressive choices made by authors in their original, non-obvious selection of words; selection, coordination and arrangement of elements; and in the case of fictionalized history, the use of fictional devices. These cases substantially shape the “substantial similarity” test applied by the court.
To prove copyright infringement, a plaintiff must show ownership of a valid copyright (which was not an issue) and copying of elements of the work that are original. That copying is usually demonstrated by proof of access (also not an issue for purposes of the motion) and “substantial similarity of protectible material” in the plaintiff’s and defendant’s works. When disputed works are entirely protectible, the standard test for substantial similarity in the Second Circuit is whether “an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them and regard [the] aesthetic appeal as the same.” But when, as in the Effie film case, a work contains both protectible and unprotectible elements, the test requires that unprotectible elements be extracted from consideration.
In addition to historical facts and interpretations, unprotectible elements include “scenes a faire,” which are incidents, characters or settings that as a practical matter are indispensable – or at least standard – in telling stories of a particular genre. (Victorians chatting over tea would be an example.) Only the protectible elements that remain should be compared for substantial similarity. Moreover, because ideas are unprotectible under copyright, the substantial similarity test must concern the expression of ideas and not the ideas themselves.
Judge Oetken observed, however, that when one or both works being compared occupies the genre of historical fiction – rather than straight history — copyright analysis involves a “further twist.” This is because works of historical fiction are in a “hybrid genre” and “do not present themselves as accounts of actual events.” Rather, they “partake to some extent in the creativity ordinarily associated with pure fiction” while drawing on unprotectible historical facts. In other words, the devices of fiction afford a different dimension of copyright protection to historical fiction compared to works of historical non-fiction.
According to the court’s decision, this requires an initial “separation out of the unprotectible historical facts and interpretations” followed by a “test for violations of the full copyright protection afforded to the remaining protectible elements.” In cases involving historical fiction, the plaintiff is required to show substantial similarity through the “creative aspects” of the works “such as fictional plot developments, scenes, settings and character traits” as well as by “reference to creative devices” like “pace, theme and narrative structure” that “span the protectible and unprotectible elements” and weave the facts into a meaningful fictional story.
Only in some cases will it be appropriate “to test for violations of the ‘thin’ copyright protection afforded to originality in the arrangement of unprotectible facts.” In this case, both inquiries were viewed by Judge Oetken to collapse into one because the “creative arrangement of unprotectible historical facts for purposes of ‘thin’ protection is achieved through narrative devices” such as theme, characterization and pace, that “encompass the protectible fictionalizations.”
Applying the Test
The court took judicial notice of a number of historical facts and separated them out along with other unprotectible elements, in order to focus on the protectible remainder. Comparing the film and one of Pomerance’s two scripts, the court reviewed the “arc of events” in each (much of which was similar but grounded in unprotectible historical fact), and key fictionalized scenes such as the first meeting of Effie and Ruskin, their wedding night, and Ruskin’s discovery of Effie’s affair with Millais (protectible but not substantially similar, “particularly when historical facts are filtered out”). Scenes a faire like Victorian gardens, a manor staffed by servants, and the winding and checking of a pocket watch, were identified and excluded from the comparison.
Narrative structure and pace of the works were held not to be substantially similar overall. And the court noted that basic themes were drawn from completely different sources: Ovid’s Metamorphoses for the film and Shakespeare’s Hamlet in Pomerance’s script. Even certain historical characters, such as Ruskin, were portrayed in significantly different ways. Taking all these differences into account, the court concluded that the two works’ “total concept and overall feel” – a concept that “principally” guides the substantial similarity analysis – were different in many critical respects. To the extent there were “occasional similarities,” they were “scattered and incidental” rather than substantial.
Historical facts provide an irresistible trove for creators of dramatic and literary works. When electing to make use of them, however, creators should be aware that protections usually afforded by copyright law may be curtailed. For many artists, however, the play’s the thing and finer points of copyright protection are secondary.
 Effie Film, LLC, v. Gregory Murphy, 11 Civ. 783, U.S. District Court, Southern District of New York, Judge Thomas Griesa; March 22, 2013.
 Effie Film, LLC, v. Eve Pomerance a/k/a Eve Mossek, 11 Civ. 7087, U.S. District Court, Southern District of New York, Judge J. Paul Oetken; December 18, 2012.
 These quotations are attributed in the decision to Susan Scafidi and Hartwell Harris Beall.
 The court’s treatment of the second Pomerance script was relatively cursory but reached the same result.