PRIOR HISTORY:
Appeal and cross-appeal from a judgment of the District Court
for the Southern District of New York (Constance Baker Motley,
Chief Judge) granting summary judgment for defendants and dismissing
complaint alleging that television program "The Greatest
American Hero" and televised commercials infringed copyrights
in "Superman, the Movie" and other Superman works, and
constituted unfair competition in violation of federal and state
law and trademark dilution.
DISPOSITION: Affirmed.
COUNSEL: Stuart Robinowitz, New York, New York (Steven
B. Rosenfeld, Kenneth Roth, Andrew J. Frackman, and Paul, Weiss,
Rifkind, Wharton & Garrison, New York, New York), for plaintiffs-Appellants-cross-appellees.
Richard J. Barnes, New York, New York (Mary D. Faucher and Townley
& Updike, New York, New York), for defendant-appellee-cross-appellant
Stephen J. Cannell Productions.
Laura V. Jones, New York, New York (Philip R. Forlenza and Hawkins,
Delafield & Wood, New York, New York), for defendant-appellee-cross-appellant
American Broadcasting Companies, Inc.
JUDGES: Mansfield, Meskill, and Newman, Circuit Judges.
OPINION: [*235] NEWMAN, Circuit Judge:
The primary issue raised by [**2] this appeal is whether as a
matter of law the fictional character Ralph Hinkley, the principal
figure in a television series, "The Greatest American Hero,"
is not sufficiently similar to the fictional character Superman,
the hero of comic books, television, and more recently films,
so that claims of copyright infringement and unfair competition
may be dismissed without consideration by a jury. The appeal is
from a January 22, 1982, judgment of the District Court for the
Southern District of New York (Constance Baker Motley, Chief Judge)
dismissing claims of plaintiffs Warner Bros., Inc., Film Export,
A.G., and DC Comics, Inc. against defendant American Broadcasting
Companies, Inc. (ABC) and third-party defendant Stephen J. Cannell
Productions upon the granting of defendants' motion for summary
judgment. Defendants cross-appeal from the denial of their motion
to amend the judgment to award attorney's fees and additional
costs beyond those allowed under Fed. R. Civ. P. 54(d). For the
reasons that follow, we affirm the judgment.
Many of the significant facts are set out in our prior opinion
affirming the denial of plaintiffs' motion for a preliminary injunction.
Warner Bros. [**3] Inc. v. American Broadcasting Companies, Inc.,
654 F.2d 204 (2d Cir. 1981). Plaintiffs own the copyrights in
various works embodying the character Superman and have thereby
acquired copyright protection for the character itself. See Detective
Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir.
1940). Since the creation of Superman in 1938, plaintiffs have
exploited their rights with great success, portraying Superman
in several media and licensing the character for a variety of
merchandising purposes. Through plaintiffs' efforts, Superman
has attained an extremely high degree of exposure and recognition.
In 1978, building on previous Superman works, plaintiff Warner
Bros., Inc. released a motion picture entitled "Superman,
The Movie" (Superman I) and more recently two sequels. Our
prior opinion in this case summarizes the manner in which Superman
I recounts the Superman legend:
The character is depicted as a superhuman being from a fictional
planet, Krypton, who was sent to earth to escape the fatal consequences
of the imminent destruction of his planet. Superman is found by
the Kents, a midwestern couple, who name the boy Clark and raise
him [**4] as their son in a bucolic setting. The Kents instill
in Clark a strong sense of moral conviction and faith in the "American
way," and counsel the boy not to reveal his superhuman powers
to anyone. Clark matures into a tall, well-built, dark-haired,
and strikingly handsome young man. Ultimately, Clark leaves his
pastoral home, finding himself drawn by a mysterious force to
a place where he encounters the image of his deceased father,
Jor-El. There, Jor-El informs him of his true identity and instructs
him to use his superpowers to protect the world from evil. Clark
emerges from his fantastic encounter with Jor-El wearing for the
first time his Superman costume -- a skin-tight blue leotard with
red briefs, boots and cape, and a large "S" emblazoned
in red and gold upon the chest and cape.
Clark subsequently obtains a position as a reporter for the Daily
Planet, but reveals his true identity to no one, assuming instead
the appearance of a shy, bumbling, but well-intentioned young
man. There he soon meets and becomes infatuated with a beautiful
colleague, Lois Lane. Later he appears clad in his Superman regalia
to perform amazing feats of strength and courage which immediately
[**5] attract wide attention, acclaim, and the amorous interest
of Lois Lane.
Superman is continually confronted by villains in all of his adventures,
but eventually overcomes all evil opponents by exploiting his
superpowers of self-propelled flight, imperviousness to bullets,
blinding speed, X-ray vision, fantastic [*236] hearing, and seemingly
immeasurable strength.
654 F.2d at 206.
In Superman I and in previous Superman works, Superman is portrayed
as a brave, fearless hero, endowed with superhuman powers. His
strength, speed, vision, and hearing far exceed the physical capabilities
of mere mortals. He is impervious to bullets. In early works,
Superman displayed extraordinary leaping ability, see Detective
Comics, Inc. v. Bruns Publications, Inc., supra, 111 F.2d at 433;
in later works this skill had become the power of flight, as Superman
is regularly seen soaring through the sky, arms stretched ahead,
then landing agilely on his feet ready for action. Superman engages
in a series of exploits against assorted criminals and villains
who pose threats not only to public safety but also to national
security and even world peace. Regardless of his adversary, Superman
[**6] always prevails.
Descriptions of Superman and lines of dialogue in the Superman
works have become as well known as the Superman character. He
is described as "faster than a speeding bullet," "more
powerful than a locomotive," and "able to leap tall
buildings in a single bound," and he always fights for "truth,
justice, and the American way." From the early comic books
continuing through the modern films, startled pedestrians have
shouted, "Look! Up in the sky! . . . It's a bird! . . . It's
a plane! . . . It's Superman!"
The substantial commercial success of Superman I and the attendant
publicity prompted many requests for licenses permitting use of
the Superman character in connection with the merchandising of
toys, greeting cards, apparel, and other products. It also led
ABC to seek a license for production of a television series about
"Superboy" based on the early adventures of Superman.
Plaintiffs, who were planning to make their own sequels and derivative
works, refused ABC permission to proceed with its proposed project.
Unable to obtain this license, ABC assigned to Cannell, the principal
of the third-party defendant production company, n1
the task of creating a "pilot" [**7] program for a TV
series involving a superhero. Cannell produced a program, and
subsequently a weekly series, entitled "The Greatest American
Hero" (Hero), which he described as being about "what
happens when you [the average person] become Superman." Hero's
protagonist, Ralph Hinkley, was given attributes intended to identify
him as an "ordinary guy." Hinkley is portrayed as a
young high school teacher attempting to cope with a recent divorce,
a dispute over the custody of his son, and the strain that his
domestic problems place upon his work and his relationship with
his girlfriend. Although Hinkley is attractive, his physical appearance
is not imposing: he is of medium height with a slight build and
curly, somewhat unkempt, blond hair.
In the pilot show, as described on the prior appeal:
Hinkley's van breaks down en route to a high school field [**8]
trip in the desert. While walking along a road in search of help,
Hinkley is nearly run over by an out-of-control automobile driven
by Bill Maxwell, an American undercover agent. Maxwell has been
searching the desert for his missing FBI partner who, unbeknownst
to Maxwell, has been murdered by a band of extremists. Maxwell
and Hinkley are suddenly approached by a brightly glowing spaceship
from which descends the image of Maxwell's deceased partner. Hinkley
is handed a magical caped costume -- a red leotard with a tunic
top, no boots, and a black cape -- which, when worn, endows him
with fantastic powers. Unfortunately, however, Hinkley loses the
instruction book that accompanied the intergalactic gift and is
left only with the verbal instruction that he should use his powers
to save the world from self-destruction. Hinkley grudgingly [*237]
accepts the mission after being importuned to do so by Maxwell.
654 F.2d at 206-07.
Hinkley's magical costume endows him with superhuman speed and
strength, the ability to fly, imperviousness to bullets, and what
Cannell calls "holographic vision," the power to perceive
sights and sounds occurring out of his line of vision. [**9] Partly
for lack of the instruction book that accompanied the costume
and partly because some of his character traits remain dominant
when he is wearing the suit, Hinkley as a superhero is not an
unqualified success. He uses his superpowers awkwardly and fearfully.
When flying, Hinkley shouts with fright and makes crash-landings,
sometimes crumpling in a heap or skidding nearly out of control
to a stop. Though protected from bullets by his costume, Hinkley
cringes and cowers when shot at by villains.
In the pilot episode of Hero, the reaction of the first man who
sees Hinkley in his costume, which he has put on in a gas station
washroom, is fear that Hinkley is some sort of pervert who may
harm the man or his seven-year-old son, Jerry. While the man calls
for the police, Jerry notices that Hinkley is trying to fly but
does not know how. The youngster patiently explains that Hinkley
must take three steps and jump vigorously into the air. Hinkley
manages to get airborne, has difficulty steering, barely avoids
colliding with a fire escape, and finally crashes into a brick
wall, knocking himself out. Police officers arrest him and take
him to a hospital, where he protests in [**10] vain to a nurse
that he is not crazy.
Goaded by FBI Agent Maxwell into using his superpowers to combat
villains, Hinkley, remains a reluctant hero. When Maxwell urges
him to intercept the President's helicopter to warn the President
of impending danger, Hinkley protests, "I'm Captain Crash!
I navigate like I got hit by a can of Raid. This suit belongs
in the Smithsonian. How'm I gonna buzz that chopper?" Despite
his apprehensiveness, Hinkley saves the President's helicopter,
then loses control of his flying ability, and crash-lands, skidding
to a stop on his chest.
The Hero series contains several visual effects and lines that
inevitably call Superman to mind, sometimes by way of brief imitation,
sometimes by mention of Superman or another character from the
Superman works, and sometimes by humorous parodying or ironic
twisting of well-known Superman phrases. Hinkley's suit invests
him with most of Superman's powers, and the suit, like Superman's,
is a tight-fitting leotard with a chest insignia and a cape. Their
outfits differ in that Superman wears a blue leotard with red
briefs, boots, and cape, while Hinkley's costume is a red leotard
with a tunic top, no boots, and [**11] a black cape. In one scene,
as Hinkley is running at super speed, smoke emerges from his footsteps,
and the sound of a locomotive is heard. A similar scene occurs
in Superman I, though even without seeing the movie it would be
difficult not to be reminded by the Hero scene of Superman, who
is regularly described as "more powerful than a locomotive."
When Hinkley first views himself in a mirror holding his costume
in front of him, he says, "It's a bird . . . it's a plane
. . . it's Ralph Hinkley." The youngster, Jerry, watching
Hinkley's unsuccessful first effort to fly, tells him, "Superman
wouldn't do it that way." In a scene with his girlfriend,
who is aware of the powers that come with the magic costume, Hinkley
says, "Look at it this way . . . you're already one step
up on Lois Lane. She never found out who Clark Kent really was."
In the three weeks before the first episode of Hero was televised,
ABC conducted one of the most extensive promotional campaigns
in the network's history, airing nearly 200 commercials, or "promos,"
each running five, ten, twenty, or thirty seconds. Most were slight
variations of thirteen basic "promos." n2
By multiplying the number of [**12] [*238] "promos"
by the estimated television audience at the time each was shown,
plaintiffs estimate that the promotional campaign registered more
than 2.4 billion viewer impressions. Some of the "promos"
contained scenes created specially for the commercial, a departure
from what plaintiffs contend is the normal industry practice of
using only action scenes excerpted from episodes to be shown in
the series.
Like the pilot episode, the "promos" show Hinkley displaying
some Superman-like abilities in a decidedly unSuperman-like way.
For example, Hinkley has the ability to fly, but does so carrying
a large lantern and, on occasion, waves his arms wildly to maintain
his course or crash lands into a treetop. He has superhuman [**13]
strength, but, before succeeding in crashing through a wall to
surprise the villains, his first attempt nearly knocks him out.
Though protected from bullets by his suit, he cringes and covers
his face with his arms when shots are fired. The "promos"
also preview the Hero series device of referring to Superman characters
or well-known Superman lines. Hinkley is shown admiring himself
in his suit, saying, "It's a bird! It's a plane. It's Ralph!"
In one of the basic "promos" an announcer gives this
description of Hinkley:
He may be unable to leap tall buildings in a single bound, he
may be slower than a speeding bullet and he may be less powerful
than a locomotive . . . but he's working on it. Give the poor
guy a chance. He's just getting started. But when he gets it going
there's no stopping him.
During this "promo" the viewer sees Hinkley crash into
a tree and then a wall, and hears a bystander call him "butterfingers."
The "promos" include three other devices that plaintiffs
assert provide special support for their copyright infringement
and unfair competition claims. First, some of the "promos"
show Hinkley flying (with his lantern) in outer space, with [**14]
the earth as a background; plaintiffs contend this is an attempt
to copy a scene from Superman I in which Superman performs exploits
in outer space. Second, some of the "promos" show the
Statute of Liberty, which plaintiffs contend is an attempt to
copy a movie scene of Superman flying around the Statute. Third,
in one of the "promos" Hinkley is shown watching a television
set on which appears a brief clip from the television cartoon
"Superfriends" showing the animated cartoon figure of
Superman. In addition, plaintiffs assert that a special videotape
prepared to promote the Hero series, which was shown to ABC's
sponsors and affiliated stations, used excerpts from the music
soundtrack of Superman I.
The complaint alleged copyright infringement
in violation of section 101 of the Copyright Act of 1976, 17 U.S.C.
@ 501 (Supp. V 1981), unfair competition in violation of the common
law of New York, and impairment of the value of plaintiffs' trademarks
and indicia associated with the Superman character in violation
of New York's "anti-dilution" statute, N.Y. Gen. Bus.
Law @ 368-d (McKinney 1968). Chief Judge Motley denied a preliminary
injunction that would have barred [**15] the showing of the Hero
series, 523 F. Supp. 611, and this Court affirmed, 654 F.2d 204.
The defendants then moved for summary judgment and dismissal of
the complaint. Chief Judge Motley initially denied that motion,
and prepared the case for bifurcated jury trials of the copyright
infringement and unfair competition claims, Fed. R. Civ. P. 42(b).
Two specific copyright claims, those concerning the use of the
Superman I music soundtrack in the special promotional videotape
and the use of the clip from the "Superfriends" cartoon
in one of the televised "promos," were ruled to be outside
the scope of the litigation. The holder of the copyright in the
Superman I music was not a party to this suit, and the claim concerning
the "Superfriends" cartoon clip was not made until the
eve of trial. Though the District Judge referred to these two
claims as "severed," it is apparent that Chief Judge
Motley simply declined to permit their addition to this lawsuit
and left them [*239] available for determination in another case.
n3
[**16]
Prior to the start of the trial the District Judge, apparently
harboring doubts as to the need for a trial, conducted an extended
pretrial conference, lasting two weeks, to afford an opportunity
to review the evidence to be offered by the plaintiffs. In the
course of the pretrial conference, Chief Judge Motley ruled that
the responses to an audience survey commissioned by the plaintiffs
were inadmissible, "because they were too general to be of
any benefit to the jury with respect to . . . the copyright claim."
n4 The District Judge also excluded all expert
testimony on the copyright claim, including testimony, sought
to be introduced by plaintiffs, offered to show the inability
of young children to perceive the differences between Hinkley
and Superman.
[**17]
On December 9, 1981, Chief Judge Motley granted partial summary
judgment to defendants on the claim that their "promos"
infringed plaintiffs' copyrights, but on all other issues reaffirmed
her prior denial of summary judgment. n5 On
December 16, 1981, the District Judge concluded that no reasonable
jury could find that the parties' works were substantially similar
and granted summary judgment to defendants on the entire copyright
claim. Chief Judge Motley initially expressed an intention to
certify the latter ruling for appeal, 28 U.S.C. @ 1292(b) (1976),
and to stay proceedings on the unfair competition claims pending
this Court's disposition of the copyright issue. However, after
reconsidering the matter, she concluded that public confusion
as to the origin of Hero was unlikely as a matter of law, and
relied on this latter finding to preclude trial on the Lanham
Act and common law unfair competition claims, and also on the
New York "anti-dilution" claim. On January 20, 1982,
the District Judge dismissed plaintiffs' complaint in a comprehensive
opinion. 530 F. Supp. 1187. On September 27, 1982, the Court denied
defendants' motion to amend the judgment to include an award [**18]
of attorney's fees and additional costs.
The basic issues concerning the copyright infringement claim are
whether the Hero and Superman works are substantially similar
so as to support an inference of copying and whether the lack
of substantial similarity is so clear as to fall outside the range
of reasonably disputed fact questions requiring resolution by
a jury. The similarity to be assessed must concern the expression
of ideas, not the ideas themselves, Reyher v. Children's Television
Workshop, 533 F.2d 87, 90-91 (2d Cir.), cert. denied, 429 U.S.
980, 50 L. Ed. 2d 588, 97 S. Ct. 492 (1976); Nichols v. Universal
Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied,
282 U.S. 902, 75 L. Ed. 795, 51 S. Ct. 216 (1931), a distinction
easier [**19] to assert than to apply, see Peter Pan Fabrics,
Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960)
(decisions "inevitably . . . ad hoc"). Though the issue
of substantial similarity is frequently a fact issue for jury
resolution, see Twentieth Century-Fox Film Corp. v. MCA, Inc.,
715 F.2d 1327 (9th Cir.1983, amended May 6, 1983); Hoehling v.
Universal City Studios, Inc., 618 F.2d 972, 977 (2d Cir.), cert.
denied, 449 U.S. 841, 66 [*240] L. Ed. 2d 49, 101 S. Ct. 121 (1980),
we have recognized that a court may determine non-infringement
as a matter of law on a motion for summary judgment, either because
the similarity between two works concerns only "non-copyrightable
elements of the plaintiff's work," id., or because no reasonable
jury, properly instructed, could find that the two works are substantially
similar, Durham Industries, Inc. v. Tomy Corp., 630 F.2d 905,
918 (2d Cir. 1980). See Twentieth Century-Fox Film Corp. v. MCA,
Inc., supra, 715 F.2d 1327, 1329 & n.6; 3 Nimmer on Copyright
@ 12.10 (1983) (hereafter "Nimmer"). Before assessing
the District Court's determination that summary judgment was appropriate
in this case, [**20] we consider the principles that guide decision
in this area.
It is a fundamental objective of the copyright law to foster creativity.
However, that law has the capacity both to augment and diminish
the prospects for creativity. By assuring the author of an original
work the exclusive benefits of whatever commercial success his
or her work enjoys, the law obviously promotes creativity. At
the same time, it can deter the creation of new works if authors
are fearful that their creations will too readily be found to
be substantially similar to preexisting works. The idea-expression
dichotomy originated in the case law and is now codified in the
statute, 17 U.S.C. @ 102(b) (Supp. V 1981), in an effort to enable
courts to adjust the tension between these competing effects of
copyright protection. Though imprecise, it remains a useful analytic
tool for separating infringing from non-infringing works, especially
when the essence of the work sought to be protected is a story
and the allegedly infringing work is accused of what Professor
Nimmer calls "comprehensive nonliteral similarity,"
3 Nimmer @ 13.03[A] [1], duplicating the "fundamental essence
or structure" of a work, [**21] id. Confronting a claim of
that sort, courts have often invoked Learned Hand's "abstractions"
test, n6 or Professor Chaffee's "pattern"
test. n7
[**22]
When, as in this case, the claim concerns infringement of a character,
rather than a story, the idea-expression distinction has proved
to be especially elusive. In Nichols, Hand applied his "abstractions"
test in determining that neither the plot nor the characters of
"Abie's Irish Rose" were infringed by a similar play
called "The Cohens and the Kellys." He noted that no
case then decided had found infringement of a character described
only by written word, although he recognized the possibility that
a literary character could be sufficiently delineated to support
a claim of infringement by a second comer, 45 F.2d at 121. Copyrightability
of a literary character has on occasion been recognized, Burroughs
v. Metro-Goldwyn-Mayer, Inc., 519 F. Supp. 388, 391 (S.D.N.Y.
1981) (Tarzan), aff'd with issue expressly left open, 683 F.2d
610, 621 (2d Cir. 1982). However, there has been no doubt that
copyright protection is available for characters portrayed in
cartoons, even before Nichols, e.g., King Features Syndicate v.
Fleischer, 299 Fed. 533 (2d Cir. 1924) (Barney Google's horse,
Spark Plug); Hill v. Whalen & Martell, Inc., 220 F. 359 (S.D.N.Y.
1914) (Mutt and Jeff); [**23] see also Empire City Amusement Co.
v. Wilton, 134 F. 132 (C.C.D. Mass. 1903) (Alphonse and Gaston)
(claim sustained against demurrer), and after Nichols, e.g., Walt
Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir.), cert.
denied, 439 U.S. 1132, 59 [*241] L. Ed. 2d 94, 99 S. Ct. 1054
(1978) (Mickey Mouse and other Disney characters); Detective Comics,
Inc. v. Bruns Publications, Inc., supra (Superman); see 1 Nimmer
@ 2.12.
In determing whether a character in a second work infringes a
cartoon character, courts have generally considered not only the
visual resemblance but also the totality of the characters' attributes
and traits. See Detective Comics, Inc. v. Bruns Publications,
Inc., supra, 111 F.2d at 433; Warner Brothers, Inc. v. Film Ventures
International, 403 F. Supp. 522, 525 (C.D. Cal. 1975); see also
Sid & Marty Krofft Television Productions, Inc. v. McDonald's
Corp., 562 F.2d 1157, 1167 n.9, 1169 (9th Cir. 1977) (H.R. Pufnstuf
puppets created for children's television series). A pertinent
consideration, formulated in a case concerning greeting cards
in which characters were one element of the art work, Roth Greeting
Cards v. United [**24] Card Co., 429 F.2d 1106, 1110 (9th Cir.
1970), is the extent to which the allegedly infringing character
captures the "total concept and feel" of the copyrighted
character. See Sid & Marty Krofft Television Productions,
Inc. v. McDonald's Corp., supra, 562 F.2d at 1167 (puppets infringed);
see also Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d
498, 500 (2d Cir. 1982) ("total concept and feel" pertinent
but held lacking as to toy snowman).
A somewhat paradoxical aspect of infringement disputes, especially
pertinent to claims of character infringement, concerns the attention
courts give both to similarities and differences in the two works
at issue. Professor Nimmer categorically asserts as a proposition,
"It is entirely immaterial that in many respects plaintiff's
and defendant's works are dissimilar if in other respects similarity
as to a substantial element of plaintiff's work can be shown."
3 Nimmer @ 13.03[B] at 13-38. In Hand's pithy phrase, "No
plagiarist can excuse the wrong by showing how much of his work
he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp.,
81 F.2d 49, 56 (2d Cir.), cert. denied, 298 U.S. 669, 80 L. Ed.
1392, 56 S. Ct. [**25] 835 (1936). Yet Professor Nimmer also recognizes,
as a second proposition, that "a defendant may legitimately
avoid infringement by intentionally making sufficient changes
in a work which would otherwise be regarded as substantially similar
to that of the plaintiff's," 3 Nimmer @ 13.03[B] at 13-38.1
to -38.2, a proposition we recognized on the prior appeal of this
case, 654 F.2d at 211, and elsewhere, Eden Toys, Inc. v. Marshall
Field & Co., supra, 675 F.2d at 501; Durham Industries, Inc.
v. Tomy Corp., supra, 630 F.2d at 913 & n.11. The two propositions
are not facially inconsistent; the second proposition contemplates
a work that would be substantially similar if its author had not
made changes from the plaintiff's work. Yet in practice the distinction
between the two propositions has become somewhat blurred. We have
observed that "numerous differences tend to undercut substantial
similarity," id. at 913; see Herbert Rosenthal Jewelry Corp.
v. Honora Jewelry Co., 509 F.2d 64, 65-66 (2d Cir. 1974). This
observation appears to go beyond Professor Nimmer's second proposition
by emphasizing the significance of differences that do not necessarily
change features [**26] of the plaintiff's work, but may be entirely
additional. To that extent, the observation modifies the first
proposition.
The tension between these two propositions perhaps results from
their formulation in the context of literary works and their subsequent
application to graphic and three-dimensional works. A story has
a linear dimension: it begins, continues, and ends. If a defendant
copies substantial portions of a plaintiff's sequence of events,
he does not escape infringement by adding original episodes somewhere
along the line. A graphic or three-dimensional work is created
to be perceived as an entirety. Significant dissimilarities between
two works of this sort inevitably lessen the similarity that would
otherwise exist between the total perceptions of the two works.
The graphic rendering of a character has aspects of both the linear,
literary mode and the multi-dimensional total perception. What
the character thinks, feels, says, and does and the descriptions
conveyed by the author through the comments of other characters
in the work episodically fill out a viewer's [*242] understanding
of the character. At the same time, the visual perception of the
character [**27] tends to create a dominant impression against
which the similarity of a defendant's character may be readily
compared, and significant differences readily noted.
Ultimately, care must be taken to draw the elusive distinction
between a substantially similar character that infringes a copyrighted
character despite slight differences in appearance, behavior,
or traits, and a somewhat similar though non-infringing character
whose appearance, behavior, or traits, and especially their combination,
significantly differ from those of a copyrighted character, even
though the second character is reminiscent of the first one. Stirring
one's memory of a copyrighted character is not the same as appearing
to be substantially similar to that character, and only the latter
is infringement. See Ideal Toy Corp. v. Kenner Products Division
of General Mills Fun Group, Inc., 443 F. Supp. 291, 305 (S.D.N.Y.
1977).
An entirely separate issue of infringement, also posed by this
case, concerns what Professor Nimmer calls "fragmented literal
similarity," 3 Nimmer @ 13.03[A][2], duplicating the exact
or nearly exact wording of a fragment of the protected work, id.
With respect to such claims, [**28] courts have invoked two distinct
doctrines. First, a de minimis rule has been applied, allowing
the literal copying of a small and usually insignificant portion
of the plaintiff's work. See, e.g., G.R. Leonard & Co. v.
Stack, 386 F.2d 38 (7th Cir. 1967); Werlin v. Reader's Digest
Ass'n, Inc., 528 F. Supp. 451, 463-64 (S.D.N.Y. 1981). Second,
under the "fair use" doctrine, codified in 17 U.S.C.
@ 107(2) (Supp. V 1981), courts have allowed the taking of words
or phrases when adapted for use as commentary or parody, see,
e.g., Elsmere Music, Inc. v. National Broadcasting Co., 623 F.2d
252 (2d Cir. 1980) (per curiam); Berlin v. E.C. Publications,
Inc., 329 F.2d 541 (2d Cir.), cert. denied, 379 U.S. 822, 13 L.
Ed. 2d 33, 85 S. Ct. 46 (1964).
The "parody" branch of the "fair use" doctrine
is itself a means of fostering the creativity protected by the
copyright law. It also balances the public interest in the free
flow of ideas with the copyright holder's interest in the exclusive
use of his work. Especially in an era of mass communications,
it is to be expected that phrases and other fragments of expression
in a highly successful copyrighted work will become [**29] part
of the language. That does not mean they lose all protection in
the manner of a trade name that has become generic. See, e.g.,
King-Seeley Thermos Co. v. Aladdin Industries, 321 F.2d 577 (2d
Cir. 1963); Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.
1921). No matter how well known a copyrighted phrase becomes,
its author is entitled to guard against its appropriation to promote
the sale of commercial products. That doctrine enabled the proprietors
of the Superman copyright to prevent a discount chain from using
a television commercial that parodied well-known lines associated
with Superman. D.C. Comics, Inc. v. Crazy Eddie, Inc., 205 U.S.P.Q.
(BNA) 1177 (S.D.N.Y. 1979) ("Look! . . . Up in the sky! .
. . It's a bird! . . . It's a plane . . . It's . . . Crazy Eddie!").
But an original work of authorship with elements of parody, though
undoubtedly created in the hope of commercial success, stands
on a different footing from the products of a discount chain.
Whatever aesthetic appeal such a work may have results from the
creativity that the copyright law is designed to promote. It is
decidedly in the interests of creativity, not piracy, to permit
authors to [**30] take well-known phrases and fragments from copyrighted
works and add their own contributions of commentary or humor.
n8 After all, any work of sufficient notoriety
to be the object of parody has already secured for its proprietor
considerable financial benefit. According that proprietor further
protection against parody does little to promote creativity, but
it places a substantial [*243] inhibition upon the creativity
of authors adept at using parody to entertain, inform, or stir
public consciousness.
Applying these principles to this case, we conclude that Chief
Judge Motley correctly entered summary judgment for the defendants
on the claim of copyright infringement. Plaintiffs make no claim
that the Hero pilot, subsequent episodes, or "promos"
[**31] infringed the story of any Superman works. Their contention
is that the Hero character, Ralph Hinkley, is substantially similar
to Superman and that the Hero works impermissibly copied what
plaintiffs call the "indicia" of Superman, a concept
broad enough to include Superman's costume, his abilities, the
well-known lines associated with him -- in short, anything occurring
in the Hero works that might remind a viewer of Superman.
The total perception of the Hinkley character is not substantially
similar to that of Superman. On the contrary, it is profoundly
different. Superman looks and acts like a brave, proud hero, who
has dedicated his life to combating the forces of evil. Hinkley
looks and acts like a timid, reluctant hero, who accepts his missions
grudgingly and prefers to get on with his normal life. Superman
performs his superhuman feats with skill, verve, and dash, clearly
the master of his own destiny. Hinkley is perplexed by the superhuman
powers his costume confers and uses them in a bumbling, comical
fashion. In the genre of superheroes, Hinkley follows Superman
as, in the genre of detectives, Inspector Clouseau follows Sherlock
Holmes.
However, we do [**32] not accept defendants' mode of analysis
whereby every skill the two characters share is dismissed as an
idea rather than a protected form of expression. That approach
risks elimination of any copyright protection for a character,
unless the allegedly infringing character looks and behaves exactly
like the original. A character is an aggregation of the particular
talents and traits his creator selected for him. That each one
may be an idea does not diminish the expressive aspect of the
combination. But just as similarity cannot be rejected by isolating
as an idea each characteristic the characters have in common,
it cannot be found when the total perception of all the ideas
as expressed in each character is fundamentally different.
An infringement claim would surely be within the range of reasonable
jury fact issues if a character strongly resembled Superman but
displayed some trait inconsistent with the traditional Superman
image. If a second comer endowed his character with Superman's
general appearance, demeanor, and skills, but portrayed him in
the service of the underworld, a jury would have to make the factual
determination whether the second character was Superman gone [**33]
astray or a new addition to the superhero genre. In this case,
however, a reasonable jury could not conclude that Hinkley is
substantially similar to the Superman character with only a change
of name. The overall perception of the way Hinkley looks and acts
marks him as a different, non-infringing character who simply
has some of the superhuman traits popularized by the Superman
character and now widely shared within the superhero genre.
The same considerations make evident the correctness of Chief
Judge Motley's ruling that the "promos" for the Hero
series present no jury issue concerning infringement of the Superman
character. By aggregating the total number of viewer impressions
made by all the showings of the thirteen basic "promos"
and their minor variations, appellants imply, and we agree, that
the visual impact of the series of "promos" should be
primarily assessed. A viewer of an adequate sampling of the "promos"
would necessarily be exposed to the Hinkley characteristics that
distinguish him from Superman. In six of the thirteen basic "promos"
Hinkley either flies out of control, crash lands, or cringes in
cowardly fashion at the firing of bullets. In six other [**34]
"promos" his flying, though uneventful, is aided (either
for vision or balance) by carrying in [*244] one hand a large
lantern. n9 It may be that within a series of
generally non-infringing "promos" a single "promo"
could be so substantially similar to a copyrighted character as
to establish infringement or at least create a fair factual issue
for jury consideration. Here, however, no single "promo"
is that similar to the Superman character, and whatever recollections
of Superman may be stirred by the "promos" showing Hinkley
flying without incident are quickly dispelled by the remainder
of the series in which his flying skills are decidedly not super.
Nor does infringement arise because one "promo" shows
the Statue of Liberty and another shows Hinkley flying in outer
space with the earth in the background. Appellants' claim that
these shots infringe scenes from Superman I is too extravagant
to be maintained. The Statue of Liberty is a widely recognized
symbol of the United States, available for portrayal in any fictional
work, and Superman has no monopoly among fictional heroes on self-propelled
flight in outer space.
[**35]
That leaves for consideration on the infringement claim the use
in the Hero episodes and "promos" of lines that either
mention Superman and other characters from the Superman saga or
incorporate phrases associated with Superman. The use of such
lines is manifestly not infringement. In each instance the lines
are used, not to create a similarity with the Superman works,
but to highlight the differences, often to a humorous effect.
Appellants acknowledge the contrasting point made by some of the
Hero lines, but insist nevertheless that the point may not be
appreciated by some of the viewers, especially young viewers who
make up a significant share of the television audience for the
Hero series. Appellants were prepared to offer expert testimony
to show that some children would not perceive the negatives when
the announcer says that Hinkley "may be unable to leap tall
buildings in a single bound," "may be slower than a
speeding bullet," and "may be less powerful than a locomotive."
We do not doubt that some viewers may miss the point, but their
misunderstanding does not establish infringement. Perhaps if Hero
were a children's series, aired on Saturday mornings among [**36]
the cartoon programs, we would have greater concern for the risk
that lines intended to contrast Hinkley with Superman might be
mistakenly understood to suggest that Hero was a Superman program.
Cf. Ideal Toy Corp. v. Fab-Lu, Ltd., 261 F. Supp. 238, 241-42
(S.D.N.Y. 1966) (children's perception of television commercial
for dolls). But when a work is presented to a general audience
of evening television viewers, n10 the possible
misperception of some young viewers cannot prevent that audience
from seeing a program that will readily be recognized by the "average
lay observer," Ideal Toy Corp. v. Fab-Lu Ltd., 360 F.2d 1021,
1022 (2d Cir. 1966), as poking fun at, rather than copying, a
copyrighted work.
Our conclusion is not altered by plaintiffs' proffered evidence
of a survey of persons who viewed the Hero pilot. The survey reported,
[**37] among other things, that of the 45% of those interviewed
who said Hinkley reminded them of some other character, 74% (33%
of the entire sample) said they were reminded of Superman. We
appreciate the problem plaintiffs confronted in designing the
survey. If they asked too pointed a question, e.g., "Do you
think Hinkley is substantially similar to Superman?", they
would have been faulted for using a leading question. On the other
hand, their open-ended questions caused Chief Judge Motley to
rule the entire survey inadmissible because the responses were
"too general." 530 F. Supp. at 1197 n.3. [*245] That
dilemma simply illustrates the problems that arise when surveys
are sought to be used as an aid in determining issues of copyright
infringement. See Ideal Toy Corp. v. Kenner Products Division
of General Mills Fun Group, Inc., supra, 443 F. Supp. at 304 (cautioning
against "the dangerous precedent of allowing trial by the
court to be replaced by trial by public opinion poll"). The
"substantial similarity" that supports an inference
of copying sufficient to establish infringement of a copyright
is not a concept familiar to the public at large. It is a term
to be used [**38] in a courtroom to strike a delicate balance
between the protection to which authors are entitled under an
act of Congress and the freedom that exists for all others to
create their works outside the area protected against infringement.
We need not and do not decide whether survey evidence of the sort
tendered in this case would be admissible to aid a jury in resolving
a claim of substantial similarity that lies within the range of
reasonable factual dispute. However, when a trial judge has correctly
ruled that two works are not substantially similar as a matter
of law, that conclusion is not to be altered by the availability
of survey evidence indicating that some people applying some standard
of their own were reminded by one work of the other. Courts have
an important responsibility in copyright cases to monitor the
outer limits within which juries may determine reasonably disputed
issues of fact. If a case lies beyond those limits, the contrary
view of a properly drawn sample of the population, or even of
a particular jury, cannot be permitted to enlarge (or diminish)
the scope of statutory protection enjoyed by a copyright proprietor.
The unfair competition and trademark [**39] dilution claims present
slightly different issues, but, as will appear, we agree with
Chief Judge Motley that defendants were entitled to summary judgment
on these claims as well as on the infringement claims. Preliminarily,
plaintiffs contend that summary judgment was procedurally improper
because it was entered by the District Court "sua sponte"
and without consideration of all of the evidence they proposed
to offer had the unfair competition claims gone to trial. We disagree.
Defendants moved for summary judgment with respect to the entire
complaint, affording plaintiffs a full opportunity to submit memoranda
and affidavits in opposition. After the District Court's initial
denial of the motion, which was made prior to viewing all of the
pertinent works, defendants appear to have renewed the motion
orally, at least with respect to the infringement claims. Thereafter
Chief Judge Motley granted the defendants partial summary judgment
with respect to the infringement claims and expressed an intention
to certify that ruling for appeal pursuant to 28 U.S.C. @ 1292(b)
(1976). Upon further reflection and with the opportunity to consider
the mass of plaintiffs' evidence presented [**40] during the two-week
pretrial session, the District Court entered summary judgment
for defendants on all of the claims.
Though we find no procedural error, we think the plaintiffs' point
is not answered, as defendants contend, by the provision of Fed.
R. Civ. P. 54(b) specifying that "any order or other form
of decision . . . which adjudicates fewer than all of the claims
. . . is subject to revision at any time before the entry of judgment
adjudicating all the claims. . . ." The District Court's
initial ruling denying summary judgment on all claims was not
an order "adjudicating" any of them; it simply left
them for adjudication at trial. n11 Normally,
a trial court's reconsideration of a denial of summary judgment
occurs upon presentation of a renewed motion for summary judgment.
See 6 Moore's Federal Practice P56.14[2] at 56-366 (2d ed. 1982).
But whether or not the motion is renewed, a trial court has discretion
[*246] to reconsider an interlocutory ruling, and no abuse of
that discretion occurred here since the plaintiffs had a full
opportunity to oppose the motion when first made and did not act
to their detriment in reliance on the initial ruling. Moreover,
[**41] the District Court accorded the plaintiffs extra consideration
by reviewing nearly all of their proposed evidence before making
a final decision, even though the essence of the claims could
be determined by inspection of only the works in question. n12
Turning to the merits of the unfair competition claims, we have
noted that "the absence of substantial similarity leaves
little basis for asserting a likelihood of confusion or palming
off" [**42] for purposes of a claim under section 43(a) of
the Lanham Act, 15 U.S.C. @ 1125(a) (1976), Durham Industries,
Inc. v. Tomy Corp., supra, 630 F.2d at 918. We do not doubt that
the image of a cartoon character and some indicia of that character
can function as a trademark to identify the source of a work of
entertainment, see DC Comics, Inc. v. Filmation Associates, 486
F. Supp. 1273 (S.D.N.Y. 1980). But, as with claims of copyright
infringement, courts retain an important authority to monitor
the outer limits of substantial similarity within which a jury
is permitted to make the factual determination whether there is
a likelihood of confusion as to source. Though likelihood of confusion
is frequently a fairly disputed issue of fact on which reasonable
minds may differ, see DC Comics, Inc. v. Reel Fantasy, Inc., 696
F.2d 24 (2d Cir. 1982), the issue is amenable to summary judgment
in appropriate cases, B & L Sales Associates v. H. Daroff
& Sons, Inc., 421 F.2d 352 (2d Cir.), cert. denied, 398 U.S.
952, 26 L. Ed. 2d 292, 90 S. Ct. 1873 (1970).
We agree with Chief Judge Motley that a visual comparison of the
Superman works with the Hero series and "promos" establishes
[**43] as a matter of law a lack of substantial similarity that
would create a likelihood of confusion as to source. Our discussion
of the differences in "total concept and feel" of the
central characters of Superman and Hinkley applies to the issue
of likelihood of confusion as well as to copyright infringement.
We do not doubt that there may be some viewers among the television
audience who think that the Hero series was produced or authorized
by those responsible for the Superman movies, television series,
or comics. Some may come to that conclusion with respect to every
film or television program portraying a character with superhuman
abilities. Perhaps some viewers think that every program with
a dramatic courtroom lawyer was made by the producers of the Perry
Mason series, or that every show featuring a doctor is a spin-off
of the Marcus Welby series. The "average lay observer"
test, however, must be applied by fact-finders within an outer
limit of reasonable fact-finding marked by the courts. Otherwise
the scope of protection a competitor is entitled to enjoy would
be expanded far beyond what Congress prescribed in the Lanham
Act. Thus, as we concluded with respect to the [**44] copyright
claim, the availability of survey evidence indicating that some
viewers associated the Hero series with Superman does not create
a reasonably disputed factual issue of likelihood of confusion
as to source when the works are as different as those in this
case.
Appellants contend that summary judgment was inappropriate on
the unfair competition claims because of the existence of evidence
offered to show that defendants intended to make the Hero series
confusingly similar to the Superman works. For example, plaintiffs
cite the fact that Cannell rejected the first proposal for Hinkley's
costume, a beige and yellow outfit with a white collar and "fold-up
wings," and selected instead a red and black outfit with
a cape, somewhat similar to Superman's red and blue costume. We
have recognized that evidence of intentional copying raises a
[*247] presumption that a second comer intended to create a confusing
similarity of appearance and succeeded. Perfect Fit Industries,
Inc. v. Acme Quilting Co., 618 F.2d 950, 954 (2d Cir. 1980) (applying
New York law). But if comparison of the works reveals no fair
jury issue concerning likelihood of confusion, then intent [**45]
to copy, even if found from the proffered evidence, would not
establish a Lanham Act violation. See B & L Sales Associates
v. H. Daroff & Sons, Inc., supra, 421 F.2d at 354; Mastercrafters
Clock & Radio Co. v. Vacheron & Constantin-le Coultre
Watches, Inc., 221 F.2d 464, 466-67 (2d Cir.), cert. denied, 350
U.S. 832, 100 L. Ed. 743, 76 S. Ct. 67 (1955); Vitarroz Corp.
v. River Brand Rice Mills, Inc., 266 F. Supp. 981, 986 (S.D.N.Y.
1967).
We also recognize that lack of substantial similarity is not a
complete answer to a Lanham Act claim, since a second comer can
violate section 43(a) by falsely representing his goods as those
of the trademark owner, see Sutton Cosmetics (P.R.) Inc. v. Lander
Co., 455 F.2d 285, 287-88 (2d Cir. 1972). A claim of "passing
off" or "palming off" may be established even if
the goods are not confusingly similar; the wrong is in the misrepresentation
of a common source. However, in this case this aspect of the section
43(a) claim is also defeated as a matter of law by visual comparison
of the works in question. Whether a television viewer could be
misled into thinking that the Hero series was produced or authorized
by those responsible [**46] for the Superman films depends on
the extent to which the Hero programs and "promos" convey
such a misrepresentation, even if it was not intended. See Parkway
Baking Co. v. Freihofer Baking Co., 255 F.2d 641, 648 & n.7
(3d Cir. 1958). Plainly there is no overt claim in this regard,
and we agree with Chief Judge Motley that perceiving the materials
through the eyes and ears of the average lay observer does not
create a fair jury issue as to whether a misrepresentation of
common source or sponsorship has been implied. The works are too
fundamentally different, and the references in the Hero programs
and "promos" to names and fragments of lines associated
with Superman are pointedly made for purposes of contrast. See
Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Chandris
America Lines, Inc., 321 F. Supp. 707, 712 (S.D.N.Y. 1971) ("The
Greatest Show on Earth Isn't").
Plaintiffs fare no better to the extent that their claims are
based on New York's common law of unfair competition or the state
anti-dilution statute. We have recognized the breadth of New York's
common law tort of unfair competition and have not hesitated to
apply it to pirated audio-visual works, [**47] so long as the
cause of action was not preempted by the Copyright Act of 1976,
17 U.S.C. @ 301 (Supp. V 1981). Roy Export Co. v. Columbia Broadcasting
System, Inc., 672 F.2d 1095, 1097 nn. 1 & 2, 1104-06 (2d Cir.),
cert. denied, 459 U.S. 826, 103 S. Ct. 60, 74 L. Ed. 2d 63 (1982).
More recently, we have noted the preemptive effect of the 1976
Act with respect to a New York unfair competition claim. Arch
Oboler and Nostalgia Lane, Inc. v. Goldin, 714 F.2d 211, 213 (2d
Cir. 1983). We do not read Oboler to hold that all state unfair
competition claims concerning works of authorship have been preempted.
Since the Copyright Act is exclusive, after January 1, 1978, only
with respect to rights "equivalent to any of the exclusive
rights within the general scope of copyright," 17 U.S.C.
@ 301(a) (Supp. V 1981), state law claims that rely on the misappropriation
branch of unfair competition are preempted, see Durham Industries,
Inc. v. Tomy Corp., supra, 630 F.2d at 918-19; 1 Nimmer @ 1.01[B][1].
However, to the extent that plaintiffs are relying on state unfair
competition law to allege a tort of "passing off," they
are not asserting rights equivalent to [**48] those protected
by copyright and therefore do not encounter preemption. See id.
@@ 1.01[B][1] n.47, 2.12 n.25. Their claim fails nevertheless
on the merits. The lack of a fairly triable issue of fact as to
"passing off" defeats this aspect of the state law claim,
just as it did the similar theory advanced under the Lanham Act.
[*248] Finally, to whatever extent plaintiffs' claims under New
York's anti-dilution statute, N.Y. Gen. Bus. Law @ 368-d (McKinney
1968), do not involve rights equivalent to those protected by
copyright and thereby escape preemption, they too fail on the
merits as a matter of law. Though an anti-dilution claim may be
established in the absence of likely confusion as to source, there
must be a mark of sufficient distinction to warrant the statute's
special protection and there must be a blurring or tarnishing
of the plaintiff's mark sufficient to constitute dilution. Sally
Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624-26 (2d Cir. 1983).
Even if we assume that the Superman character and related indicia
function as trademarks with the requisite distinctiveness, plaintiffs
have failed as a matter of law to present a triable issue as to
[**49] the blurring or tarnishing of their marks. Cf. Dallas Cowboys
Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05
& n.8 (2d Cir. 1979) (dilution by showing "sexually depraved
film" using distinctive uniforms "almost identical"
with those of plaintiffs). Even if Superman's trademarks are not
as indestructible as the character that spawned them, no reasonable
jury could find that the Hero series or "promos" blurred
or tarnished those marks.
The cross-appeal need not detain us. Though defendants were surely
entitled to urge the District Judge that creativity and competition
could be chilled by the prospect of defending litigation like
this suit and that defendants should therefore be awarded attorney's
fees under the Copyright and Lanham Acts, 17 U.S.C. @ 505 (Supp.
V 1981); 15 U.S.C. @ 1117 (1976), for having to resist plaintiffs'
claims, Chief Judge Motley's decision not to award fees and added
costs was not an abuse of discretion.
The judgment of the District Court is affirmed.