By Jonathan Zavin of Loeb & Loeb LLP
Click here for a copy of the full decision.
Canal+ Image UK Ltd. ("Canal+") owns the copyright to the film Kind Hearts
and Coronets (the "Film"), a comic adaptation of Roy Horniman's 1907 novel
Israel Rank. Defendants Steven Lutvak and Robert Friedman entered into an
agreement with Canal+ to adapt the Film into a musical play (the "Musical").
After Canal+ decided not to produce the Musical, the writers learned that Kind
Hearts was based on Israel Rank, and that Israel Rank had passed into the
public domain. Defendants revised their play to maintain the plot of the novel
(written in the form of the prison memoirs of a man condemned to death), and
eliminate elements unique to the Film. They did, however, retain the Film's
dramatic device of using a single actor - Sir Alec Guinness in the Film - to
portray each of the novel's eight murder victims. Canal+ sued, claiming that
the Musical infringed its copyright in Kind Hearts and violated the parties'
contract. Among other things, Canal+ argued that the Musical "retained the
central and most memorable expressive part of Kind Hearts and Coronets: the
comedy inherent in having all eight of the aristocratic murder victims played
by a single actor . . . ."
moved to dismiss the complaint on the ground that Canal+ failed to state a
claim for copyright infringement and the further ground that the Copyright Act
preempts Canal+'s claim for breach of contract.
court began by identifying the protectible elements of the Film. It noted that
in the case of a derivative work based on an underlying work in the public
domain, only the material added to the underlying work is protected by
court analyzed the Film's characters, plot, theme and setting, and found that
very little of those elements were protectible. It then turned to the dramatic
device of using one actor to play multiple roles in the same production. It
characterized this device as a "standard convention." Finding it no more
original than using a character who talks directly to an audience, the court
found that it was not protectible.
court then applied the "more discerning observer test" (which compares the
protectible elements in the plaintiff's work to defendant's work) and the
"total concept and feel test" (which compares the two works more broadly) to
the Film and the Musical.
noting that the Film contained very few original elements, the court held that
there was no substantial similarity between the protectible aspects of the
characters in or plot of the Film and the characters in or plot of the Musical.
Indeed, the court emphasized that the plot of the Musical differs from the plot
of the Film in several ways. For instance, in the Film the protagonist learns
from his mother at a very young age that he has been disinherited and grows up
with resentment. In the Musical, by contrast, the protagonist only learns of
his disinheritance after his mother's death. In sum, the court found that "most
of the plot of the Musical that was similar to the plot of the Film is not
original to the Film and nearly all of the plot that is similar to the film is
not similar to the plot of the Musical."
addition to the comparison of the individual elements of the film, the court
also considered whether there is a substantial similarity between the "total
concept and feel" of the two works. Canal+ contended that the composite victim
is "bound together in an inseparable unity with all of the Film's other
elements" and "is interwoven throughout the elaborate plot, moving the audience
to laughter each time another foppish victim falls." Canal+ argued that, as a
result, the composite victim is responsible for creating the total concept and
feel of the film. The court disagreed, observing that the total concept and
feel of the film is a dark comedy/drama about a distinguished heir who murders
his relatives in order to advance in rank. In comparison to the Film, the court
noted that the Musical is a bawdy, over-the-top send-up of the same
unprotectible plot. Although the court acknowledged that both works employ the
convention of using a single actor to play all the victims, it concluded that
that device was hardly the "heart and soul" of each work. Accordingly, the
court dismissed Canal+'s copyright claim on the grounds that no reasonable jury
would find that the film and musical are substantially similar in total concept
court also held that Canal+'s breach of contract claim was preempted by the
For more information, please contact Jonathan Zavin at email@example.com or at 212.407.4161. Circular
230 Disclosure: To assure compliance with Treasury Department rules
governing tax practice, we inform you that any advice (including in any
attachment) (1) was not written and is not intended to be used, and
cannot be used, for the purpose of avoiding any federal tax penalty that
may be imposed on the taxpayer, and (2) may not be used in connection
with promoting, marketing or recommending to another person any
transaction or matter addressed herein.
For more information about LexisNexis products and
solutions connect with us through our corporate