Second Circuit: No Copyright Preemption of Breach of Contract Claim Over Network's Use of Idea for Television Series
Forest Park pitched an idea for a television series to the USA Network by mailing a written series treatment for the idea to the network and meeting with network representatives. The concept was for a series called "Housecall," "in which a doctor, after being expelled from the medical community for treating patients who could not pay, moved to Malibu, California, and became a 'concierge' doctor to the rich and famous." Forest Park alleged that at the meeting with the network, it was understood that the idea was being pitched with the intention of the network purchasing it for development. Discussions ended between the parties without the network purchasing the idea.
About four years later, the USA Network produced and aired a show called "Royal Pains," "in which a doctor, after being expelled from the medical community for treating patients who could not pay, became a concierge doctor to the rich and famous in the Hamptons."
Forest Park then sued USA Network for breach of contract and the network moved to dismiss under Fed. R. Civ. P. 12(b)(6), alleging in part that the claim was preempted by the Copyright Act. The district court agreed with the network and dismissed the complaint.
The Second Circuit disagreed, instead concluding that Forest Park had adequately plead a breach of contract claim that included an implied promise to pay, which was based on rights that were not the equivalent of those protected under the Copyright Act and was therefore not preempted.
As to the first requirement for preemption--that the work comes within the subject matter of copyright--the Second Circuit emphasized that a work may fall within the subject matter of copyright for preemption purposes even if it contains uncopyrightable material. Put somewhat more succinctly, the "scope of copyright for preemption purposes . . . extends beyond the scope of available copyright protection." This case was a good example of that proposition because the work at issue was Forest Park's ideas for the series manifested in the series treatments it prepared and it was the ideas embodied in those written materials that Forest Park alleged the network improperly used. Thus, even though ideas are not copyrightable, the court found that the work still fell within the subject matter of copyright for purposes of the preemption question.
As to the second requirement for preemption--that the right asserted is equivalent to an exclusive right under the Copyright Act--the Second Circuit concluded that there were several qualitative differences between Forest Park's claim that there was an implied-in-fact agreement that required the network to pay for the use of its idea and a copyright violation claim:
- "First, the Copyright Act does not provide an express right for the copyright owner to receive payment for the use of a work."
- "Second, a plaintiff suing for failure to pay under a contract must prove extra elements beyond use or copying, including mutual assent and valid consideration."
- "Third, a breach of contract claim asserts rights only against the contractual counterparty, not the public at large."
The Second Circuit also noted that its sister circuits had also concluded that some contract claims do not involve rights equivalent to those under the Copyright Act and are therefore not preempted, including the Ninth Circuit in Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975 (9th Cir. 2011) (en banc) (previously blogged here).
The Second Circuit did not decide whether preemption is always precluded when there is a contract claim or only when the claim includes a promise to pay because here, the complaint specifically alleged a contract that included an implied promise to pay for the use of Forest Park's idea:
The alleged contract does not simply require USA Network to honor Forest Park's exclusive rights under the Copyright Act . . .; it requires USA Network to pay for the use of Forest Park's ideas. A claim for breach of a contract including a promise to pay is qualitatively different from a suit to vindicate a right included in the Copyright Act and is not subject to preemption.
The case cite is Forest Park Pictures v. Universal Television Network, Inc., No. 11-2011-cv (2d Cir. June 26, 2012).