Case 2:08-cv-00234-RAJ-TEM Document 25 Filed 12/05/08 Page 1 of 26 PageID# 231
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` UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF VIRGINIA
`Norfolk Division
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`CYNTHIA DONN TESSLER,
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`Plaintiff,
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`v.
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`NBC UNIVERSAL, INC.,
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`Defendant.
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`ACTION NO. 2:08cv234
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`REPORT AND RECOMMENDATION
`OF UNITED STATES MAGISTRATE JUDGE
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`This action was referred to the undersigned United States Magistrate Judge pursuant to
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`the provisions of 28 U.S.C. § 636(b)(1)(B) and (C) and Rule 72(b) of the Federal Rules of Civil
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`Procedure, as well as Rule 72 of the Rules of the United States District Court for the Eastern
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`District of Virginia.
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`This case was referred for a report and recommendation on NBC Universal, Inc.’s
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`(“NBC’s”) Motion to Dismiss [Doc. No. 15]. For the reasons set forth below, the Court
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`recommends GRANTING in part, and DENYING in part, NBC’s Motion to Dismiss.
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`I. FACTUAL AND PROCEDURAL HISTORY
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`This matter arises from the business dealings between an independent producer and a
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`major entertainment conglomerate. Plaintiff Cynthia Donn Tessler (“Tessler”) is a media
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`producer residing in the City of Norfolk, Virginia. (Am. Compl. ¶¶ 5, 7.) Defendant NBC is a
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`media and entertainment corporation with its principle place of business in New York, New
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`York. (Am. Compl. ¶¶ 6, 8.) In early 2001, Tessler began developing “Parenting Your Parent”
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`(“PYP”), a series of video programming intended to explore the issues related to adult children
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`caring for their aging parents. (Am. Compl. ¶ 10.) Tessler filed a U.S. Copyright Registration on
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`December 28, 2001, which contained the following materials: (1) a copy of Tessler’s pilot video
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`for PYP, in DVD format (“Video”); (2) a written copy of the PYP introduction and story
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`segments for video production (“Treatment”); and (3) an excerpt and table of contents for the
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`book, “Parenting Your Parents: A Baby Boomer’s Guide to Caring For Your Aging Parent”
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`(“Book Excerpt”). (Am Compl. ¶ 11.)
`1
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`From August 2002 through September 2004, Tessler engaged in discussions with NBC
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`regarding the possibility of NBC using PYP programming, or acting as a distribution partner.
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`(Am. Compl. ¶¶ 16-17.) During the course of these discussions, Tessler provided NBC with the
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`entirety of her materials, including copies of the materials previously deposited with the U.S.
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`Copyright Office. (Am. Compl. ¶ 17, 22.) Eventually, NBC informed Tessler that NBC desired
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`to use the copyrighted materials as part of future NBC programming. (Am. Compl. ¶ 24.)
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`Specifically, NBC promised to pay Tessler $750,000 in return for the right to use the materials.
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`(Am. Compl. ¶ 24.) By 2004, however, the collaborative project had not come to fruition, and
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`NBC informed Tessler that NBC would not be using Tessler’s copyrighted materials. (Am.
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`Compl. ¶ 25.) In response, Tessler issued a letter to NBC on September 1, 2004, memorializing
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`that (1) negotiations between Tessler and NBC had ceased; (2) Tessler intended to seek other
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`means of distribution for PYP; and (3) Tessler retained all rights to PYP and would seek legal
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` There is uncertainty regarding whether the Deposit Copy contains the Treatment and
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`Book Excerpt (Am. Compl. ¶ 14-15), but for purposes of this motion, NBC concedes that the
`court may consider the Video, Treatment, and Book Excerpt as included in the Deposit Copy
`(Def.’s Br. at 11).
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`Case 2:08-cv-00234-RAJ-TEM Document 25 Filed 12/05/08 Page 3 of 26 PageID# 233
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`action if NBC continued development of her materials. (Am. Compl. ¶ 27.) At oral argument,
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`Tessler’s counsel conceded that Tessler never demanded return of the copies of her materials.
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`In 2007, NBC began airing a television series, “Trading Places,” in conjunction with the
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`NBC Nightly News. (Am. Compl. ¶ 28.) Tessler alleges that “the NBC Nightly News series
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`directly copies, in whole or in part and without authorization, the original material of Ms.
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`Tessler’s program for ‘Parenting Your Parent.’” (Am. Compl. ¶ 28.) Tessler further alleges that
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`a former NBC executive admitted “that he and others at NBC . . . ‘used to sit around and try to
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`figure out a way to steal Parenting Your Parent from [Tessler].’” (Am. Compl. ¶ 36.)
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`On May 20, 2008, Tessler filed a Complaint against NBC in this court. [Doc. No. 1]. By
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`joint motion, filed July 11, 2008, the parties agreed to amend the response schedule. [Doc. No.
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`11]. Tessler filed her Amended Complaint on July 21, 2008, which alleges (1) copyright
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`infringement, (2) breach of contract, (3) breach of implied contract, and (4) conversion. [Doc No.
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`14]. In response, NBC filed a Motion to Dismiss on August 1, 2008, contending that all four
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`claims should be dismissed pursuant to Federal Rule of Civil Procedure 12(b)(6). [Doc. No. 15].
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`On October 10, 2008, this court heard oral argument on the motion. Duncan Glover Byers, Esq.,
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`represented Tessler, and Stephen Edward Noona, Esq., and Richard Johan Conrod, Jr., Esq.,
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`represented NBC. The Contract Court Reporter was Carol Tayloe.
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`II. STANDARD OF REVIEW
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`A motion to dismiss under Rule 12(b)(6) tests the “legal sufficiency of the complaint, and
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`not the facts in support of it.” E. Shore Mkts., Inc. v. J.D. Assocs. Ltd. P'ship, 213 F.3d 175, 180 (4th
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`Cir.2000)(citations omitted). In order to survive the motion to dismiss, the complaint must provide
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`“fair notice of what the claim is and the grounds upon which it rests.” Bell Atl. Corp. v. Twombly,
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`127 S.Ct. 1955, 1959 (2007)(quotations omitted). Also, the “factual allegations must be enough to
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`raise a right to relief above the speculative level . . . .” Id. at 1965. And while the district court must
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`consider the facts in a light most favorable to the plaintiff, the court is not bound by the complaint’s
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`“labels and conclusions,” nor by “a formulaic recitation of a cause of action's elements.” Id. at 1959.
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` Furthermore, the court “need not accept as true unwarranted inferences, unreasonable conclusions,
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`or arguments.” E. Shore Mkts., 213 F.3d at 180.
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`In addressing a motion to dismiss under Rule 12(b)(6), the court must exclude any evidence
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`outside the scope of the pleadings. Fed. R. Civ. P. 12(d). An exhibit submitted by the defendant,
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`however, can be considered “if it was integral to and explicitly relied on in the complaint and if the
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`plaintiffs do not challenge its authenticity.” Am. Chiropractic Ass'n v. Trigon Healthcare, Inc., 367
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`F.3d 212, 234 (4th Cir. 2004).
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`III. ANALYSIS
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`NBC has moved to dismiss all counts of Tessler’s Amended Complaint. First, NBC asserts
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`that the copyright infringement claim fails, as a matter of law, to show sufficient similarity between
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`Trading Places and protectable elements of PYP. Second, NBC argues that federal copyright law
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`preempts the remaining state law claims for breach of contract, breach of implied contract, and
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`conversion. NBC further argues that the state law actions, even if not preempted, fail to state claims
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`upon which relief can be granted.
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`A. Copyright Infringement (Count I)
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`In order to establish copyright infringement, a plaintiff must prove “(1) ownership of a valid
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`copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns, Inc.
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`v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991). For purposes of this motion, it is undisputed that
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`Tessler owns a valid copyright in the PYP materials. Thus, the issue is whether Tessler has
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`sufficiently alleged the copying of protected elements of PYP. “As is often the case, direct evidence
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`of copying is lacking, making it necessary to look to circumstantial evidence.” Towler v. Sayles,
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`76 F.3d 579, 581-82 (4th Cir. 1996).
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`In order to establish copying through circumstantial evidence, Tessler must show that NBC
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`had access to copyrighted materials and created a product that was “substantially similar” to the
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`copyrighted materials. Id. at 582. See also 4 M. Nimmer & D. Nimmer, Copyright § 13.01[B]
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`(2008)(“Legions of cases promulgate the twin requirements of access plus substantial similarity.”).
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`Here, NBC concedes that it had access to Tessler’s copyrighted PYP materials. The central issue,
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`therefore, is whether NBC’s program, Trading Places, is substantially similar to the protected
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`elements of PYP.
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`1. Court Has Authority to Review and Compare Trading Places and PYP Materials.
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`As a preliminary matter, NBC asserts that the Court has authority to review and compare
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`Trading Places and PYP for the purpose of deciding the Motion to Dismiss. In addressing a motion
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` Although the Amended Complaint alleges that “the NBC Nightly News series directly
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`copies, in whole or in part and without authorization, the original material of Ms. Tessler's
`program for ‘Parenting Your Parent,’” the Amended Complaint does not provide a single
`example. (Am. Compl. ¶ 28.)(emphasis added). Under Twombly, this Court is not bound by
`such “a formulaic recitation of a cause of action's elements.” 127 S.Ct. at 1959. Furthermore,
`“[w]hen a district court considers the original work and the allegedly copyrighted work in
`deciding a 12(b)(6) motion, the legal effect of the works are determined by the works themselves
`rather than by allegations in the complaint.” Jacobsen v. Deseret Book Co., 287 F.3d 936, 941-
`42 (10th Cir. 2002). Tessler also argues that the Amended Complaint alleges direct evidence of
`copying through the statement of an NBC executive, but this argument is misleading. According
`to the Amended Complaint, the NBC executive stated “that he and others at NBC . . . ‘used to sit
`around and try to figure out a way to steal Parenting Your Parent from [Tessler].’” (Am. Compl.
`¶ 36.) Even though the Court must accept the allegation as true, the statement does not constitute
`direct evidence of copying. Rather, the allegation demonstrates that at the time these executive
`meetings took place, NBC had not yet stolen (copied) PYP.
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`to dismiss under Rule 12(b)(6), a district court must exclude evidence outside the scope of the
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`pleadings. Fed. R. Civ. P. 12(d). Tessler attached the following to the Amended Complaint: (1)
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`PYP’s pilot video in DVD format; (2) PYP’s introduction and story segments for video production;
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`and (3) an excerpt and table of contents from Tessler’s book, “Parenting Your Parent: A Baby
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`Boomer’s Guide to Caring for Your Aging Parent.” Thus, these exhibits are clearly within the scope
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`of the pleadings and subject to the Court’s review for the Motion to Dismiss. See Fed. R. Civ. P.
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`10(c).
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`Furthermore, the Court can also consider the submitted footage of Trading Places. The
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`district court may consider documents “attached to the motion to dismiss, so long as they are integral
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`to the complaint and authentic.” Sec’y of State of Defence v. Trimble Navigation Ltd., 484 F.3d 700,
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`705 (4th Cir. 2007); Am. Chiropractic Ass'n v. Trigon Healthcare, Inc., 367 F.3d 212, 234 (4th Cir.
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`2004). The allegedly infringing news program, Trading Places, is clearly integral to Tessler’s
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`Amended Complaint, and Tessler does not dispute this. Rather, Tessler argues that the submitted
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`footage of Trading Places is not authentic, because the footage is incomplete and does not include
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`the related materials on the website, MSNBC.com. This argument fails for two key reasons. First,
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`the absence of certain episodes or materials does not strip the submitted episodes and materials of
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`authenticity. See, e.g., Zella v. E.W. Scripps Co., 529 F. Supp. 2d 1124, 1131 (C.D.Cal.
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`2007)(granting motion to dismiss copyright infringement claim for lack of substantial similarity,
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`even though the parties had not attached all the episodes). Second, Tessler identified MSNBC.com
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`in its Amended Complaint as a source of the infringing material. (Am. Compl. ¶ 33.) As a result,
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`the website material is incorporated by reference and properly before this Court for review. Id.
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`(“This [incorporation by reference doctrine] serves a critical policy interest in ‘preventing plaintiffs
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`from surviving a Rule 12(b)(6) motion by deliberately omitting references to documents upon which
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`their claims are based.’”)(quoting Parrino v. FHP, Inc., 146 F.3d 699, 706 (9th Cir. 1998)). See also
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`Bryant v. Avado Brands, Inc. 187 F.3d 1271, 1280 n.16 (11th Cir. 1999).
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`Tessler also argues that a comparison of the works by the Court for a Rule 12(b)(6) motion
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`to dismiss would constitute an impermissible determination of fact. The case law rejects this
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`argument, however, by consistently empowering district courts to review and compare works in the
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`context of copyright infringement. Jacobsen v. Deseret Book Co., 287 F.3d 936, 941-42 (10th Cir.
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`2002)(“When a district court considers the original work and the allegedly copyrighted work in
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`deciding a 12(b)(6) motion, the legal effect of the works are determined by the works themselves
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`rather than by allegations in the complaint.”); Nelson v. PRN Prods., 873 F.2d 1141, 1143-44 (8th
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`Cir. 1989)(“The trial judge could properly determine the matter of substantial similarity as a matter
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`of law and did so by granting defendants’ [Rule 12(b)(6)] motion to dismiss the copyright count on
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`the ground that it failed to state a claim for infringing use.”); Christianson v. West Pub. Co., 149
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`F.2d 202, 203 (9th Cir. 1945)(“There is ample authority for holding that when the copyrighted work
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`and the alleged infringement are both before the court, capable of examination and comparison,
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`non-infringement can be determined on a motion to dismiss.”); Zella, 529 F. Supp. 2d at 1130-31
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`(collecting cases); Adams v. Warner Bros. Pictures Network, 2007 WL 1959022, at *5 (E.D.N.Y.
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`June 29, 2007)(collecting cases in the Second Circuit), aff’d, 2008 WL 3842890 (2nd Cir. 2008).
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`Tessler has not cited, and this Court cannot find, any controlling precedent to the contrary. Rather,
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` Tessler relies on cases that are inapposite to the present dispute. For example, Tessler
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`cites Secureinfo Corp. v. Telos Corp. to argue that the Eastern District of Virginia has denied a
`motion to dismiss under similar circumstances. 387 F. Supp. 2d 593 (E.D. Va 2005). In
`Secureinfo, however, the defendant did not dispute the direct copying of plaintiff’s risk
`management software files. Id. at 599-603, 606. Thus, substantial similarity was not even at
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`the most analogous Fourth Circuit precedent, involving motions for summary judgment, further
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`supports a trial judge’s authority to resolve the issue of substantial similarity as a matter of law. See
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`Towler, 76 F.3d at 584 (upholding the trial judge’s decision that, as a matter of law, no jury
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`comparing “the screenplays could reasonably decide that the two works are substantially similar”);
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`Eaton v. Nat’l Broad. Co., 972 F. Supp. 1019, 1023 (E.D. Va. 1997)(“[A] court may determine
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`non-infringement as a matter of law on a motion for summary judgment, either because the similarity
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`between two works concerns only non-copyrightable elements of the plaintiff's work, or because no
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`reasonable jury, properly instructed, could find that the two works are substantially
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`similar.”)(quotations omitted).
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`Therefore, the Court has authority to dismiss Tessler’s copyright infringement claim if it
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`concludes that no reasonable jury could find that the Trading Spaces programming is substantially
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`similar to protected elements of Tessler’s PYP materials. Accordingly, the Court reviewed Tessler’s
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`issue. Instead, the court denied dismissal because the plaintiff specifically alleged that the direct
`copies constituted a “substantial part” of the entire software program. Id. at 613. Since the root
`issue of substantial similarity is at issue in the present case, Secureinfo is not analogous. Jetform
`Corp. v. Unisys Corp. is similarly distinguishable as a software licensing case where the issue
`was whether the plaintiff had sufficiently plead the existence of a copyright, rather than whether
`the software products were substantially similar. 11 F. Supp. 2d 788 (E.D. Va. 1998). Tessler
`also relies on the denial of summary judgment in Huthwaite, Inc. v. Sunrise Assisted Living, Inc.,
`but the case is clearly inapposite. 261 F. Supp. 2d 502 (E.D. Va. 2003). Unlike Tessler, the
`plaintiff in Huthwaite provided “a page by page comparison” of the two works to reveal “some
`phrases, metaphors, and diagrams [that were] similar or identical.” Id. at 506, 511. The court
`even acknowledged that summary judgment on substantial similarity “is proper where no
`reasonable jury, properly instructed, could find that the two works are substantially similar.” Id.
`at 511 (quotations omitted). Finally, Tessler cites Ganz Brothers Toys v. Midwest Importers for
`the proposition that substantial similarity is best suited for the jury. 834 F. Supp. 896 (E.D. Va.
`1993). Even though the Ganz court denied the cross-motions for summary judgment, the court
`recognized that “[i]n the overwhelming majority of cases in which summary judgment is granted
`on the issue of substantial similarity, the court finds that no substantial similarity exists.” Id. at
`902 n.8. Therefore, the Ganz decision actually undermines Tessler’s position.
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`Video, Treatment, and Book Excerpt, attached to the Amended Complaint, as well the footage of
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`Trading Places submitted by NBC, and the relevant online content of MSNBC.com.
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`2. There is No Substantial Similarity Between Trading Places and PYP.
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`In order to establish substantial similarity, a plaintiff must satisfy both (1) an objective
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`(“extrinsic”) test and (2) a subjective (“intrinsic”) test. Towler, 76 F.3d at 583-84.4
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`i. Objective Test
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`The objective test deems two works “extrinsically similar” if the two works “contain
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`substantially similar ideas that are subject to copyright protection.” Id. at 583. In particular, the
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`court must “search[] for extrinsic similarities such as those found in plot, theme, dialogue, mood,
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`setting, pace or sequence.” Id. at 584. The similarities must involve protectable elements, however,
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`because “general ideas, themes, or plots are not eligible for copyright protection.” Eaton, 972 F.
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`Supp. at 1027. See also Funky Films, 462 F.3d at 1077 (“We must take care to inquire only whether
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`the protectable elements, standing alone, are substantially similar.”)(quotations omitted). With these
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`principles in mind, the Court will address each factor in turn.
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` Towler, as controlling precedent, empowers this Court to consider both the objective
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`and subjective tests in determining substantial similarity as a matter of law. 76 F.3d at 583-84. It
`should be noted, however, that the Ninth Circuit has recently held, for pre-trial motions on
`substantial similarity, that “courts apply only the extrinsic test.” Funky Films, Inc. v. Time
`Warner Entm’t Co., 462 F.3d 1072, 1077 (9th Cir. 2006)(emphasis added). By contrast, “the
`intrinsic test, which examines an ordinary person's subjective impressions of the similarities
`between two works, is exclusively the province of the jury.” Id. Although the Fourth Circuit
`originally derived its test for substantial similarity from Ninth Circuit law, see Dawson v.
`Hinshaw Music, Inc., 905 F.2d 731, 732-33 (4th Cir. 1990)(citing Litchfield v. Spielberg, 736
`F.2d 1352, 1355 (9th Cir.1984)), the U.S. Court of Appeals for the Fourth Circuit has not yet
`adopted the recent procedural refinements announced in Funky Films. Thus, this Court will
`address both the objective and subjective tests.
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`a. Plot
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`Plot, in the context of copyright law, is generally defined as “the sequence of events by which
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`the author expresses his theme or idea.” 4 M. Nimmer & D. Nimmer, Copyright § 13.03[A][1][b]
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`(2008). In light of the case law for non-fiction television programming, the plot of Trading Places
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`is not substantially similar to protected elements of PYP’s plot. In Bethea v. Burnett, for example,
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`the shows “CEO” and “The Apprentice” both depicted “a group of dynamic contestants from varied
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`backgrounds competing in business challenges in a dynamic corporate environment for promotions
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`and benefits and, ultimately, a real job as a top-level executive of a corporation.” 2005 WL
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`1720631, at *11 (C.D. Cal. 2005). The court held that these “[g]eneral plot ideas are not protected
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`by copyright law,” since they are “nothing more than a string of generic ideas.” Id. Similarly, in
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`Zella, the district court found that the plots of “Showbiz Chefs” and “Rachael Ray” did not resemble
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`each other, even though both embodied a “talk show format that features a host, guest celebrities,
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`and cooking.” Zella, 529 F. Supp. 2d at 1135-36. In the present case, Tessler has alleged even less
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`similarity in plot, and more importantly, the dissimilarities are striking. The Treatment states that
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`“Parenting Your Parent is designed to provide concise, practical, and usable information to help
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`people face the issues [involved in caring for elderly parents].” (Am. Compl., Ex. B). Illustrating
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`this educational format, the Video consists almost entirely of expert advice on when and how a child
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`should prevent their elderly parent from driving a vehicle. (Am Compl., Ex. A). In clear contrast,
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`Trading Places is a series of personal interest stories, focusing on the personalities and situations of
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`individual relationships, including NBC’s own on-air talent with their parents. Moreover, the
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`growing majority of the online content consists of personal stories mailed in by viewers of the
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`program. In sum, whereas the plot of PYP is a vehicle for educating middle-aged children to
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`properly care for their parents, the plot of Trading Places chronicles the personal struggles of
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`particular individuals dealing with the issue. Therefore, the plots are not substantially similar as a
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`matter of law.
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`b. Theme
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`Likewise, Trading Places and PYP employ distinct themes. As discussed above, PYP frames
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`the issue of aging parents as a challenge with a solution, and seeks to equip the viewer with tools to
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`confront the challenge. Trading Places, by contrast, offers an intimate glimpse into the lives of real
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`families, including NBC journalists, and examines the relationship between child and parent as they
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`confront the issues involved with aging. Trading Places does not focus on providing advice for
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`dealing with these issues, but instead, asks the viewers to send in their own stories and impressions.
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`Although both works involve the general idea of aging parents, “[o]nce viewed beyond the presence
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`of this general idea, any similarity in themes evaporate[s].” Capcom Co., Ltd. v. MKR Group, Inc.,
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`2008 WL 4661479, at *9 (N.D. Cal. Oct. 20, 2008)(holding that the general idea of zombies in a
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`mall is not protectable). For example, the Zella court stated that the theme of a “can do attitude” and
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`“presenting solutions to everyday problems” (“Rachel Ray”) was dissimilar to “an invitation to look
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`inside celebrity homes, and perhaps get a glimpse of celebrity lifestyles” (“Showbiz Chefs”). Zella,
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`529 F. Supp. 2d at 1136. Similarly, the didactic tone of PYP differs from the personal portraits of
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`Trading Places. Thus, as a matter of law, the themes are not substantially similar.
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`c. Dialogue
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`Tessler does not identify, nor can this Court find, any similarity in dialogue between Trading
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`Places and PYP. Tessler argues that the similarity in titles is evidence of substantial similarity, but
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`the argument lacks merit. First, “Trading Places” and “Parenting Your Parent” do not contain a
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`common word. Second, even if the titles were identical, a copyright infringement action would be
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`inappropriate because “titles are not copyrightable.” Comins v. Discovery Commc’ns, 200 F. Supp.
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`2d 512, 519 (D. Md. 2002). See also 37 C.F.R. § 202.1(a) (“Words and short phrases such as names,
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`titles, and slogans” are not copyrightable.). Therefore, the dialogue lacks substantial similarity as
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`a matter of law.
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`d. Mood
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`As discussed above, Trading Places and PYP produce distinct moods. Specifically, Trading
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`Places delivers emotional personal stories, whereas PYP delivers practical information so viewers
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`can act pragmatically in the face of difficult emotion. Even if a reasonable jury identified both
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`moods as “emotional,” however, the outcome would not change. “[C]opyright law does not protect
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`scenes a faire,” such as “incidents, characters, or settings which, as a practical matter, are
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`indispensable or standard in the treatment of a given topic.” Eaton v. Nat’l Broad. Co., 972 F. Supp.
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`1019, 1029 (E.D. Va. 1997)(quotations omitted). See also Rice v. Fox Broad. Co., 330 F.3d 1170,
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`1177 (9th Cir. 2003)(holding that similar moods of mystery “constitute scenes a faire, and merge
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`with the idea of revealing magic tricks”); Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1451 (9th Cir.
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`1988)(finding that comic moods “are common to the genre of action-adventure television series and
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`movies and therefore do not demonstrate substantial similarity”); Zella, 529 F. Supp. 2d at 1136
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`(“[T]he relaxed, fun mood of the two [cooking] shows is not a protectable element, even though it
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`may be substantially similar.”) Here, the emotional mood is standard, if not indispensable, to a
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`discussion of caring for aging, ailing parents. Thus, the emotional mood is an example of scenes of
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`faire, merges into the general topic, and is not eligible, as a matter of law, for protection.
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`e. Setting
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`Tessler does not identify, nor can this Court find, any similarity between the specific settings
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`of the two works. As discussed above, even if both projects bring the viewer inside a home or a
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`doctor’s office, such generic similarities constitute unprotected scenes a faire, and are not eligible
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`for protection.
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`f. Characters
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`Tessler asserts that the characters of Trading Places and PYP are the same, but this argument
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`is not persuasive. Although both works include middle-aged children, elderly parents, and subject-
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`matter experts, these stock elements are more examples of scenes a faire, and in turn, are not
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`protected forms of expression. Eaton, 972 F. Supp. at 1029 (“Thus, even though the two works
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`share certain superficial similarities, such as two female mechanics, two young boys, and two garage
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`owners . . . the basic human traits that certain characters share, including age, sex, and occupation,
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`are too general or too common to deserve copyright protection.”)(quotations omitted). Furthermore,
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`Trading Places and PYP emphasize different characters. Whereas Trading Places focuses on the
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`personal history and relationship between child and parent, PYP highlights the experts, drawing
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`heavily from their professional advice. Therefore, as a matter of law, the characters are not
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`substantially similar.
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`In sum, Tessler’s claim fails the objective test because no extrinsic similarities exist between
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`Trading Places and the protected elements of PYP.
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`ii. Subjective Test
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`For the same reasons discussed above, Tessler’s claim also fails the subjective test, which
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`“considers whether the intended audience could determine that the works are substantially similar,
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`usually without the aid of expert testimony.” Towler, 76 F.3d at 584. Here, the “intended audience”
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`is the lay public, and the central inquiry is whether an ordinary member of the public would find
`5
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`substantially similarity based on the “total concept and feel” of the works. Id. at 583-84. In light
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`of the categorical differences that rendered Trading Places and PYP extrinsically dissimilar, it is
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`equally evident that the works are intrinsically dissimilar. In particular, the public views Trading
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`Places as a personal and community interest news story. By clear contrast, PYP would strike a
`6
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`reasonable audience as a “how to” video workshop, heavy on advice, and light on the personal
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`narrative that evoked the public’s emotional response to Trading Places. As a result, the distinct
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`“total concept and feel” of the two works demonstrates that Tessler’s claim cannot satisfy the
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`subjective test.
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`In order to avoid dismissal, Tessler’s claim of copyright infringement must establish both the
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`objective and subjective elements of substantial similarity. Instead, the claim fails to sufficiently
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`establish either. Thus, as a matter of law, Trading Places is not substantially similar to protected
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`elements of PYP, and Tessler’s claim of copyright infringement should be dismissed.
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`B. Breach of Contract (Count II)
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`1. Preemption
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`NBC argues that federal copyright law preempts Tessler’s state law claim for breach of
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`contract. Section 301(a) of the Copyright Act, in relevant part, provides:
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` “[I]n any given case, a court should be hesitant to find that the lay public does not fairly
`5
`represent a work's intended audience.” Dawson v. Hinshaw Music, Inc., 905 F.2d 731, 737 (4th
`Cir. 1990).
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` NBC has published online thousands of personal stories sent in by viewers who watched
`6
`Trading Places. See http://www.msnbc.msn.com/id/17049721/
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`[A]ll legal or equitable rights that are equivalent to any of the exclusive rights within
`the general scope of copyright as specified by section 106 in works of authorship that
`are fixed in a tangible medium of expression and come within the subject matter of
`copyright as specified by sections 102 and 103 . . . are governed exclusively by this
`title. Thereafter, no person is entitled to any such right or equivalent right in any such
`work under the common law or statutes of any State.
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`17 U.S.C. § 301(a) (emphasis added). Under the statute’s two-prong test, a state law claim is
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`preempted if (1) the work fits within the subject matter scope of federal copyright, as defined by
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`Sections 102 and 103 of the Copyright Act, and (2) the state law rights are equivalent to any
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`exclusive federal rights set out in Section 106. United States ex rel. Berge v. Bd. of Trustees, 104
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`F.3d 1453, 1463 (4th Cir. 1997).
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`The PYP materials clearly satisfy the first prong of the test. According to the Amended
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`Complaint, Tessler filed a U.S. Copyright Registration, which included the Video, Treatment, and
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`Book Excerpt. Under Section 102 of the Copyright Act, the PYP materials are “original works of
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`authorship fixed in any tangible medium of expression,” and thus, fall within the subject matter
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`scope of copyright. 17 U.S.C. § 102(a). Although Tessler argues that “preemption only applies
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`should the Court find that Tessler’s materials are protected expressions of her idea(s),” (Pl.’s Br. at
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`27), the Fourth Circuit has rejected this exact argument, finding that it:
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`rests on a fallacious interpretation of the Copyright Act. In other words, [Plaintiff]
`wants to argue that ideas embodied in a work covered by the Copyright Act do not
`fall within the scope of the Act because the Act specifically excludes them from
`protection. But scope and protection are not synonyms. Moreover, the shadow
`actually cast by the Act's preemption is notably broader than the wing of its
`protection.
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`Berge, 104 F.3d at 1463. As a result, even though Trading Places did not infringe on protected
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`expressions of PYP, the breach of contract claim still sits in the “shadow” of the subject matter of
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`copyright.
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`The second prong of the test is not satisfied, however, if the state law claim contains an
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`“extra element,” such that the state law claim is “qualitatively different from a copyright
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`infringement