the police tip to a crazy woman who lives across the street.
The Simons and Addie then pay a visit to Ty Becker's old secretary, who informs them that Ty was working on an internal FBI investigation at the time he was killed. Immediately thereafter, the Simons and Addie receive a call from Kinneman, who tells them that "there is more truth to this" Dillinger affair than anyone had imagined and that the Simons should meet him at a closed-down theater.
When the Simons and Addie enter the theater, a gangster documentary is playing. Kinneman and a man wearing spectator shoes shoot at the trio. The Simons eventually kill the man in spectator shoes. They then subdue Kinneman, who admits to killing Ty Becker in order to stop the internal investigation which, it turns out, was directed at Kinneman, and to leaving the fake Dillinger fingerprint on the gun at the bank.
In the penultimate scene, the FBI thanks the Simons for their help in arresting Kinneman and solving the Dillinger mystery. Rick nevertheless insists Dillinger may be alive and perhaps living in Oregon, as Nash contends in DDOA. The episode closes with a teaser: the dentist, one of the leads whom the Simons had interviewed earlier in the program, is seen pushing his elderly father in a wheelchair and admonishing him to refrain from discussing the "old days in Chicago" anymore.
At the outset, we note that an eyeball comparison of Nash's Dillinger Story and The Print shows that they are similar in only the slightest way. The plot, characters, tone, time period and mood of the works have almost nothing in common. In our view, the only arguable similarities between The Print and Nash's books are (1) A.J.'s relating to Rick some of the same physical discrepancies between Dillinger and the autopsy report that Nash cites in his books, and (2) Rick's suggestion that Dillinger moved to Oregon. However, these slight similarities are hardly "substantial" enough to support an infringement claim. Thus, in our eyeball comparison between the books and The Print, it is difficult to see any similarities which a trier of fact could regard as "substantial."
Applying the Seventh Circuit's preferred approaches for comparing copyrighted and allegedly infringing materials, we reach the same conclusion. Under Judge Hand's abstraction test, we look to the level of abstraction shared by Nash's works and The Print. Other than the premise that Dillinger did not die in 1934 and that some evidence supports this belief, The Print and the books are completely dissimilar.
In our view, this level of similarity is far too "high" on the abstraction "scale" to constitute "substantial similarity." This level of similarity is only slightly more particular than the idea that Dillinger did not die in 1934, which we have already held is uncopyrightable. Although it is often difficult to point to the level of abstraction at which similarities become actionable under copyright law, this is not a close case. We hold that the shared premise that Dillinger did not die and that evidence supports this belief is a very high level of abstraction and that Nash cannot show unlawful appropriation on this basis.
Professor Chafee's pattern test yields the same result. Neither the "sequence of events" nor "the interplay and development of the characters" of the works at issue are vaguely similar, much less "substantially similar".
Nash, of course, disagrees with our assessment that there are no actionable similarities in these works. In his memorandum, he cites seven "major similarities" between his books and The Print. We quote Nash's description of each major similarity and discuss each in turn:
Nash's Books The Print
1. The FBI realized after 1. The FBI realized after
the shooting that they had the shooting that they had
killed the wrong man and killed the wrong man and
had to cover up their error had to cover up their error
to the public. to the public.
Nash's contention is simply wrong. The Print does not touch upon whether the FBI covered up the fact its agents had mistakenly killed Jimmy Lawrence, or any other person.
Nash's Books The Print
2. Dillinger's fingerprints 2. Dillinger's fingerprints
were "planted" in the Cook were planted by a killer at
County Morgue to deceive the scene of the murder
authorities, the public and of an FBI agent to throw off
the press as to the identity investigators and to deceive
of the person killed. the public and the press.
Nash's works include an alleged "planting" of fingerprint records, rather than an actual fingerprint, as occurred in The Print. Moreover, the planting which took place in Nash's works occurred in the 1930s while all the action in The Print was set in the 1980s.
Nash's Books The Print
3. Dillinger was falsely 3. Dillinger is falsely
blamed for the robbery of blamed for a murder and
the First National Bank bank robbery he had nothing
of East Chicago, Indiana to do with.
and the killing of a
policeman (Patrick O'Mally)
This is not a similarity; the murders and robberies took place decades apart and involved completely different circumstances and motives.
Nash's Books The Print
4. Certain photographs were 4. Four key photographs
creatively selected to be from Nash's Works appear
included in Nash's Works to including (in altered form)
help support his Dillinger the one that follows page
theory. 76 of Dillinger: Dead or
Alive?, which was attached
to the original Story Outline
submitted by Defendants Butler
and Clarke to Universal.
Another Stop-Action shot from
an old newsreel appears,
showing the exact frame Nash
chose in his Works to demonstrate
the absence of one of Dillinger's
teeth. The only photographs in
the Episode are ones included
in Nash's Works.
In our earlier opinion, we held that the "selection and compilation" of photographs contained in Nash's books may be copyrightable. Opinion at 5, n.3. However, even assuming the defendants utilized four of the photographs which appear in Nash's books, the simple use of the photographs does not appropriate Nash's "selection and compilation." In The Print, the photographs did not appear together or in the same order as they did in Nash's works. Further, the defendants did not use the photographs for the same purpose Nash did, i.e., to support the theory that Dillinger did not die. In sum, while the defendants may have used the same photographs Nash did, this similarity does not infringe upon Nash's copyrightable interest in the pictures, i.e. their selection and arrangement.
Nash's Books The Print
5. Certain incidents, events 5. These incidents, events
and possible occurences and possible occurrences
were selected or created appear:
by Nash to make his Works
more interesting and
a. persons, including two a. two imposters from
from the Los Angeles area, Southern California coming
coming forward claiming forward claiming to be
to be Dillinger; Dillinger;
b. the characterization b. characterizations of
of these persons as these imposters as "lunatics"
"crackpots"; and "Whackos";
c. a large number of leads c. the statement by the
as to Dillinger's whereabouts police that lots of leads
from people across the have come in from California
country with a good portion and other parts of the
of the leads coming from country;
d. a lead from one person d. a lead from a woman
claiming that Dillinger is claiming that Dillinger
a nearby neighbor; was living with one of
her neighbors . . . .
e. the suggested possibility e. the suggestion that
that Dillinger may still be the dentist's father is
alive; Dillinger (and hence alive);
f. a strong possibility f. the statement by Rick
that Dillinger ended up that Dillinger died of old
living in Oregon after he age in Oregon.
escaped from Chicago.
As far as No. 5a-d are concerned, the fact that leads came in from all over the world and that wacky Dillinger impostors came forward are very general similarities. None of the specific leads or impostors were the same. The similarity rests only on the most abstract level: that Dillinger impostors exist and that far-reaching leads regarding Dillinger's whereabouts would result from a publicized investigation of Dillinger. With respect to No. 5e, we have already held that Nash cannot rely upon the idea that Dillinger did not die in order to show substantial similarity. With regard to No. 5f, we agree that this is a similarity. However, Rick's statement is almost a throwaway line which has little bearing upon the story. In itself, this cannot constitute substantial similarity.
Nash's Books The Print
6. There was a possible 6. Near the end, an FBI man
relationship between states that Kinneman is selling
Dillinger and organized names and addresses of relocated
crime, which was behind the witnesses "to the underworld."
faking of Dillinger's death.
With respect to No. 6, it is difficult to understand Nash's point. In essence, Nash is arguing that, because The Print contains a character with underworld ties, it is similar to his books which suggest that Dillinger may have been connected with organized crime. Under Nash's theory, The Godfather would also be similar to his works. The fact that organized crime is referred to in defendants' television program is not actionable similarity.
Nash's Books The Print
7. Bloodletters and Badmen 7. A.J. Simon reads a passage
states that a lost autopsy from the fictitious book
report disproves the victim's Twentieth Century Desperadoes
corpse as being Dillinger's (which is almost identical in
due to the victim's eye design, graphics, size and
color, height, weight, heart thickness to Bloodletters and
condition and scars. Badmen) which refers to the
physical discrepancies; there
is a later reference to the
victim's eye color as a physical
As we noted above, the defendants do rely upon some of the same physical discrepancies between Dillinger and the autopsy report that Nash does. However, we have already held that no reasonable trier of fact could find substantial similarity on this basis.
To summarize, after reviewing Nash's books and The Print, we have concluded that the similarities between Nash's Dillinger Story and The Print are so slight that no reasonable trier of fact could conclude that they are "substantially similar." Because no genuine question of fact exists as to the material issue of "substantial similarity," we grant summary judgment in favor of the defendants on Count I.
COUNTS II AND III: UNFAIR COMPETITION AND UNFAIR TRADE PRACTICES
Counts II and III of Nash's complaint state claims for "unfair competition" and "unfair trade practices," respectively. In their motion to dismiss or, in the alternative, for judgment on the pleadings, the defendants argue that both counts are preempted by § 301 of the Copyright Act, 17 U.S.C. § 301.
Before discussing preemption, we note Nash argues that Count II includes a federal claim under the Lanham Act, 15 U.S.C. § 1125. To the extent that Count II raises a Lanham Act claim (we intimate no opinion as to the sufficiency of Nash's allegations),
we hold that it is not preempted by § 301.
. . . two conditions that both must be satisfied for preemption of a right under state law: First, the work in which the right is asserted must be fixed in tangible form and come within the subject matter of copyright as specified in § 102. Second, the right must be equivalent to any of the rights specified in § 106.
Baltimore Orioles v. Major League Baseball Players, 805 F.2d 663, 674 (7th Cir. 1986), cert. denied, 480 U.S. 941, 94 L. Ed. 2d 782, 107 S. Ct. 1593 (1987).
With respect to the first condition, Nash's books clearly meet the requirement that the "work . . . be fixed in a tangible form." Id. Furthermore, as "literary works," 17 U.S.C. § 102(a)(1), Nash's books come within the "subject matter of copyright." Nash misses the point when he argues that, because Counts II and III seek, in part, recovery for the appropriation of facts, ideas, research, and other uncopyrightable material, they escape preemption. The critical point is that Nash's books are materials within the subject matter of copyright. State law claims do not avoid preemption simply because they are based upon the improper use of uncopyrightable material contained in works properly subject to copyright. See Baltimore Orioles, 805 F.2d at 676; Rand McNally v. Fleet Management Systems, 591 F. Supp. 726 (N.D. Ill. 1983) (Getzendanner, J.); Nimmer, Nimmer on Copyright, § 1.01[B]. If the rule were otherwise, states would be free to regulate materials Congress has assigned to the public domain. Baltimore Orioles, 805 F.2d at n.23. Therefore, Counts II and III satisfy the first condition of the Baltimore Orioles test.
The second condition of the Baltimore Orioles test is met if the state law right is "equivalent" to one of the rights granted by the Copyright Act. A state law right is "equivalent" if: "(1) it is infringed by the mere act of reproduction, performance, distribution, or display, or (2) it requires additional elements to make out a cause of action, but the additional elements do not differ in kind from those necessary for copyright infringement." Baltimore Orioles, 805 F.2d at 678 n.26 (7th Cir. 1986) (emphasis added). Nash asserts that Counts II and III are not preempted because they contain elements "additional to" and "different in kind from" his copyright cause of action. We examine each count in turn.
First, from the text of the complaint, it is difficult to determine under what theory Nash seeks recovery in Count II. He vaguely titles Count II "unfair competition" and includes no statutory citations. However, in his memoranda, he styles Count II as an action under the Uniform Deceptive Trade Practices Act ("UDTPA"), Ill. Rev. Stat. § 121 1/2, para. 311 et seq.9
The UDTPA prohibits a wide variety of deceptive commercial practices and requires the person seeking recovery to show that the proscribed conduct resulted in "likelihood of confusion." Id. at para. 312. By contrast, confusion is not an essential element of an infringement action under the Copyright Act; the copying of protected expression, without more, constitutes infringement. Atari, 672 F.2d at 614. Thus, Nash's UDTPA claim does contain an "element" not present in his copyright action.
However, the existence of an "extra" element is not enough. We must determine whether the "confusion" element is different "in kind," or "qualitatively different" from the elements of copyright infringement. In discussing what is meant by "different in kind," the Seventh Circuit has approvingly cited cases which held that the elements of "scienter," "intent," and "commercial immorality" required for state law actions for wrongful appropriation are not sufficiently "different in kind" to preclude preemption. Baltimore Orioles, 805 F.2d at n.26.
For example, in Mayer v. Josiah Wedgwood, 601 F. Supp. 1523 (S.D.N.Y. 1985), the court held that the extra element of "commercial immorality" in the plaintiff's state law misappropriation claim was not sufficiently "qualitatively" different to preclude preemption. As the court viewed it, "commercial immorality" is:
. . . an extra element in the same sense that awareness and intent are: it alters the scope of the action but not its nature. That is, it would permit the action to go forward when the infringing conduct is immoral. The basic act which constitutes the infringement of plaintiff's rights, however, is the same as that of copyright.
Id. at 1535.
Therefore, under the Mayer court's view, "consumer confusion" would not be a "qualitatively different" element because it limits only the scope, not the nature, of Nash's claim. That is, the UDTPA would prohibit only those copyright infringements which cause confusion in the marketplace.
Although it cited Mayer, the court in Baltimore Orioles seemed to utilize a somewhat different analysis when addressing the precise issue before it: whether a state law publicity claim was preempted. In its discussion, the court emphasized that "the right of publicity is closely analogous to the goals of patent and copyright law." Baltimore Orioles, 805 F.2d at 679. Furthermore, in distinguishing between the right of publicity and the right of privacy, which is not preempted, the court noted:
It is true that the rights of publicity and of privacy evolved from similar origins; however, whereas the right of privacy protects against intrusions on seclusion, public disclosure of private facts, and casting an individual in a false light in the public eye, the right of publicity protects against the unauthorized exploitation of names, likenesses, personalities, and performances that have acquired value for the very reason that they are known to the public.