By James Stewart

Andy Deutsch, a partner in DLA Piper’s Trademark Copyright and Media practice group in the New York Office, recently won a judgment on the pleadings for Oscar-winning actress and writer Emma Thompson in the District Court for the Southern District of New York. Mr. Deutsch commented to Law360 on Tuesday that, “we are very happy that Judge Oetken found that Effie is an entirely original interpretation of historical facts, and rejected groundless accusations of copyright infringement. It is very gratifying to help make it possible for a world audience to see this great story and film.” This case is particularly important due to its high profile parties and clarification of copyright protection for works of historical fiction.

Eve Pommerance is a writer who owns the copyright for two screen plays based on the lives of historical characters John Ruskin, John Everett Millais, and Euphemia “Effie” Gray, set in the Victorian art world. Ms. Thompson authored a screenplay exploring the lives and relationships of the same historical characters. Ms. Thompson’s screenplay has been made into a major motion picture titled Effie, starring Ms. Thompson, Dakota Fanning, and Robbie Coltrane, which is now in the post-production stage.

Ms. Pommerance brought suit against Ms. Thompson alleging that Ms. Thompson had infringed her copyrighted screenplays in Ms. Thompson’s screenplay Effie. This case explores the extent to which an author of historical fiction possesses an exclusive right in their works and discusses the difficult policy balance between the public’s right to historical information and incentivizes authors of creative works by allowing them certain exclusive rights in their creations. Ms. Thompson also owns a copyright in her “Effie” screenplay which was filed by members of DLA Piper’s Trademark, Copyright, and Media practice group in Washington, DC.

In a typical copyright infringement claim, a plaintiff must show (1) ownership of a valid copyright and (2) actual copying elements of the alleged original work. Direct evidence of copying is often difficult to prove, thus, courts look to an alleged infringer’s access to the copyrighted work and the substantial similarity of the copyrighted work and the allegedly infringing work. Normally, courts assess substantial similarity by inquiring whether an “ordinary observer” (without specialized knowledge or skill) could overlook the differences between the works unless he set out to detect them. However, in a work that contains protectable elements and elements from the public domain, a court often makes a more discerning analysis, which asks whether the protectable elements standing alone are substantially similar. In essence, the substantial similarity inquiry looks at the expression of ideas, such as the similarities of treatment, details, scenes, events, or characterization, and not the ideas or general themes themselves.

In a lengthy discussion of the appropriate treatment of the mix of historical facts and creative authorship, the Court notes that the freedom to access facts and ideas are at the core of democracy and some information must remain freely accessible and usable by all. Generally, facts are not attributable to an act of authorship and consequently, no one author may claim ownership in them. Adding imagination to such facts, however, can result in a protectable elements of a work that deals with historical facts. The Court concludes that the proper analysis to adopt in the hybrid genre of historical fiction focuses on the substantial similarity of the creative devices of the work such as fictional plot developments or settings or literary devices such as pace, theme, and narrative structure and not the similarities of characters, plots, scenes, or places that reflect historical facts or interpretations.

The Court outlined the basic historical framework of the lives and relationships of the characters in the three works relying on accepted authorities. The Parties stipulated five significant fictionalized scenes appearing in all three works as those subject of the substantial similarity analysis. The Court found that the scenes lacking firm historical basis were fictionalized very differently by the respective authors, and those that were closer to the historical record creatively speculated about what might have occurred between the characters in different ways. Additionally, the pace, structure, and theme of the works notably diverge as the plot develops in each respective work. The standard for substantial similarity of characters between an original and an allegedly infringing work is high, particularly when the characters in a disputed work are based on actual historical figures. The prohibition on copyright protection of historical facts extends to include control over the interpretation of characters based on historical persons.

While widespread differences between works do not prevent a finding of infringement, numerous differences between the works lend to a finding of no substantial similarity and thus no infringement. The Court ultimately concluded that the similarities between Ms. Thompson’s work and Ms. Pommerance’s works were few and, to the extent that they existed, very minor. Accordingly, the Court ruled in favor of Ms. Thompson. This case will likely set precedent regarding authorship and copyright ownership of creative works in the historical fiction genre. Ms. Thompson’s film, Effie, is expected to be released in 2013.