FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
AARON BENAY; MATTHEW BENAY,
individually,
Plaintiffs-Appellants,
v.
WARNER BROS. ENTERTAINMENT, No. 08-55719
INC., a Delaware corporation; D.C. No.
RADAR PICTURES, INC., a California 2:05-cv-08508-PSG-
corporation; BEDFORD FALLS FMO
PRODUCTIONS, INC., a California
OPINION
corporation; EDWARD ZWICK, an
individual; MARSHALL HERSKOVITZ,
an individual; JOHN LOGAN, an
individual,
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
Philip S. Gutierrez, District Judge, Presiding
Argued and Submitted
October 8, 2009—Pasadena, California
Filed June 9, 2010
Before: William A. Fletcher and Richard R. Clifton, Circuit
Judges, and James K. Singleton,* Senior District Judge.
Opinion by Judge William A. Fletcher
*The Honorable James K. Singleton, Senior United States District
Judge for the District of Alaska, sitting by designation.
8455
BENAY v. WARNER BROS. ENTERTAINMENT 8459
COUNSEL
Sylvia Havens, Los Angeles, California, for the appellants.
George R. Hedges, Gary E. Evans, QUINN EMANUEL
URQUHART OLIVER & HEDGES, LLP, Los Angeles, Cali-
fornia, Jaime Wayne Marquart, Daryl Marc Crone, BAKER
MARQUART CRONE & HAWXHURST, LLP, Los Ange-
les, California, for the appellees.
OPINION
W. FLETCHER, Circuit Judge:
Plaintiffs are two brothers, Aaron and Matthew Benay, who
wrote and copyrighted a screenplay, The Last Samurai (“the
8460 BENAY v. WARNER BROS. ENTERTAINMENT
Screenplay”). The Benays contend that the creators of the film
The Last Samurai (“the Film”) copied from the Screenplay
without permission. They sued Warner Brothers Entertain-
ment, Inc., Radar Pictures, Inc., Bedford Falls Productions,
Inc., Edward Zwick, Marshall Herskovitz, and John Logan
(collectively “Defendants”), who wrote, produced, marketed,
and/or distributed the Film. Inter alia, the Benays alleged
copyright infringement under federal law and breach of con-
tract under California law.
The district court granted summary judgment to Defendants
on the copyright and breach of contract claims. We affirm on
the copyright claim. We reverse and remand on the breach of
contract claim.
I. Background
The Benays wrote their Screenplay between 1997 and
1999. They registered it with the Writers Guild of America in
1999 and with the federal copyright office on February 23,
2001. The Benays’ agent, David Phillips, “pitched” the
Screenplay to the president of production at Bedford Falls,
Richard Solomon, on the telephone sometime between May 9,
2000, and May 12, 2000. Phillips provided a copy of the
Screenplay to Solomon on May 16, 2000. According to Phil-
lips, he provided the Screenplay with the implicit understand-
ing that if Bedford Falls used it to produce a film, the Benays
would be appropriately compensated. Solomon informed Phil-
lips after receiving the Screenplay that Bedford Falls had
decided to “pass” because it already had a similar project in
development.
The Benays point to circumstantial evidence that, in their
view, indicates that important aspects of the Film were copied
from the Screenplay. Defendants contend that the Film was
developed independently of the Screenplay. The Screenplay
and the Film are similar in some respects and dissimilar in
others.
BENAY v. WARNER BROS. ENTERTAINMENT 8461
The protagonist in the Screenplay is James Gamble, a suc-
cessful West Point professor with a beautiful wife and a five-
year-old son. Gamble travels to Japan at the request of Presi-
dent Grant. Gamble owes a debt to the President because
then-General Grant saved Gamble’s career after he acciden-
tally killed eight of his own men during the Civil War. Gam-
ble is initially successful in training and leading the Japanese
Imperial Army, which is victorious in its first battle against
the samurai. However, that battle turns out to be a strategic
blunder because it incites a full samurai rebellion led by a
treacherous samurai named Saigo. Gamble’s five-year-old son
is killed during Saigo’s attack on a Christian church service.
The death of his son leads Gamble to launch an attack against
Saigo, which results in a devastating loss for the Imperial
Army. Gamble falls into an opium-aided stupor, in which he
is haunted by his failure, his mistake during the Civil War,
and the death of his son. Gamble eventually is pulled out of
this crisis by his wife and by Masako, a female samurai war-
rior who has double-crossed Saigo. The remainder of the
Screenplay consists of Gamble’s campaign to exact revenge.
A series of battles unfolds between the Imperial Army, led by
Gamble, and the samurai rebels. The conflict eventually ends
with Gamble killing Saigo in a sword fight with the help of
Masako, who dies in the fight. Gamble returns to the United
States, where he lives in a Japanese-style house with his wife
and a newborn child named Masako.
The protagonist in the Film is Nathan Algren, an unmarried
alcoholic. He is haunted by his role in an attack on an inno-
cent tribe during the Indian Campaigns. He has just been fired
from his dead-end job hawking Winchester rifles when he is
recruited by his former commander to train the Japanese
Imperial Army in modern warfare. He travels to Japan as a
mercenary. After Algren is captured by the samurai at the end
of a disastrous first battle, he is exposed to traditional samurai
culture. Algren bonds with Katsumoto, the honorable leader
of the samurai rebellion, and falls in love with Taka, the
widow of a samurai Algren killed while fighting for the Impe-
8462 BENAY v. WARNER BROS. ENTERTAINMENT
rial Army. Algren assimilates into a samurai village, eventu-
ally joining the samurai in a final futile battle against the
modernized Imperial Army. After the samurai army is devas-
tated, Algren confronts the young Emperor and teaches him
the value of traditional samurai culture before returning to
live with Taka in the samurai village.
The Benays filed suit on December 5, 2005, exactly two
years after the public release of the Film. They asserted
claims of copyright infringement under federal law, and
breach of contract, breach of confidence, and intentional inter-
ference with prospective economic advantage under Califor-
nia law. Only the copyright and breach of contract claims
survived to the summary judgment stage. The district court
granted summary judgment to Defendants on both claims.
The Benays timely appealed the grant of summary judg-
ment.
II. Standard of Review
We review de novo the district court’s grant of summary
judgment, viewing the evidence in the light most favorable to
the non-moving party to determine the presence of any issues
of material fact. See Kouf v. Walt Disney Pictures & Televi-
sion, 16 F.3d 1042, 1044 (9th Cir. 1994).
III. Discussion
A. Copyright Claim
[1] To prevail on their copyright infringement claim, the
Benays “must demonstrate ‘(1) ownership of a valid copy-
right, and (2) copying of constituent elements of the work that
are original.’ ” Funky Films, Inc. v. Time Warner Entm’t Co.,
462 F.3d 1072, 1076 (9th Cir. 2006) (quoting Feist Pubs., Inc.
v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991)). Defen-
dants do not deny that the Benays own a valid copyright, but
BENAY v. WARNER BROS. ENTERTAINMENT 8463
they deny having copied from the Screenplay. The issue
before us on appeal is whether there is substantial similarity
between protected elements of the Screenplay and comparable
elements of the Film. See id. (“Absent evidence of direct
copying, proof of infringement involves fact-based showings
that the defendant had access to the plaintiff’s work and that
the two works are substantially similar.” (quotation omitted)).
“ ‘When the issue is whether two works are substantially
similar, summary judgment is appropriate if no reasonable
juror could find substantial similarity of ideas and expres-
sion.’ ” Id. (quoting Kouf, 16 F.3d at 1045). Substantial simi-
larity is a fact-specific inquiry, but it “ ‘may often be decided
as a matter of law.’ ” Id. (quoting Sid & Marty Krofft Televi-
sion Prods., Inc. v. McDonald’s Corp. (“Krofft”), 562 F.2d
1157, 1164 (9th Cir. 1977)). “Indeed, ‘[w]e have frequently
affirmed summary judgment in favor of copyright defendants
on the issue of substantial similarity.’ ” Id. at 1077 (quoting
Shaw v. Lindheim, 919 F.2d 1353, 1355 (9th Cir. 1990)).
[2] “The Ninth Circuit employs a two-part test for deter-
mining whether one work is substantially similar to another.”
Shaw, 919 F.2d at 1356. To prevail in their infringement case,
the Benays must “prove[ ] both substantial similarity . . .
under the ‘extrinsic test’ and substantial similarity . . . under
the ‘intrinsic test.’ ” Id. (emphasis in original). “The ‘extrinsic
test’ is an objective comparison of specific expressive ele-
ments.” Cavalier v. Random House, Inc., 297 F.3d 815, 822
(9th Cir. 2002). “The ‘intrinsic test’ is a subjective compari-
son that focuses on ‘whether the ordinary, reasonable audi-
ence’ would find the works substantially similar in the ‘total
concept and feel of the works.’ ” Id. (quoting Kouf, 16 F.3d
at 1045). On a motion for summary judgment, we apply only
the extrinsic test. The intrinsic test is left to the trier of fact.
See Swirsky v. Carey, 376 F.3d 841, 844-45 (9th Cir. 2004);
Funky Films, 462 F.3d at 1077. If the Benays fail to satisfy
the extrinsic test, they cannot survive a motion for summary
8464 BENAY v. WARNER BROS. ENTERTAINMENT
judgment. See Olson v. Nat’l Broad. Co., 855 F.2d 1446,
1448-49 (9th Cir. 1988).
[3] “The extrinsic test is an objective test based on specific
expressive elements: the test focuses on articulable similari-
ties between the plot, themes, dialogue, mood, setting, pace,
characters, and sequence of events in two works.” Kouf, 16
F.3d at 1045 (quotation omitted). “A court must take care to
inquire only whether the protect[able] elements, standing
alone, are substantially similar.” Cavalier, 297 F.3d at 822
(emphasis and quotation omitted). “Copyright law only pro-
tects expression of ideas, not the ideas themselves.” Id. at 823.
“Familiar stock scenes and themes that are staples of literature
are not protected.” Id. “Scenes-a-faire, or situations and inci-
dents that flow necessarily or naturally from a basic plot
premise, cannot sustain a finding of infringement.” Id. Histor-
ical facts are also unprotected by copyright law. Narell v.
Freeman, 872 F.2d 907, 910-11 (9th Cir. 1989).
[4] Under the “inverse ratio” rule, if a defendant had
access to a copyrighted work, the plaintiff may show infringe-
ment based on a lesser degree of similarity between the copy-
righted work and the allegedly infringing work. See Shaw,
919 F.2d at 1361 (citing 2 M. Nimmer, Nimmer on Copyright
§ 143.4, at 634 (1976)); see also Rice v. Fox Broad. Co., 330
F.3d 1170, 1178 (9th Cir. 2003). For purposes of the Benays’
copyright claim, we assume without deciding that the inverse
ratio rule applies to lower the burden on the Benays to show
similarity. Even if the Defendants had access to the Screen-
play, the Benays have not shown sufficient similarity between
the Screenplay and the Film to maintain an infringement
claim under federal copyright law.
The Benays point to a number of similarities between the
Screenplay and the Film. Both have identical titles; both share
the historically unfounded premise of an American war vet-
eran going to Japan to help the Imperial Army by training it
in the methods of modern Western warfare for its fight against
BENAY v. WARNER BROS. ENTERTAINMENT 8465
a samurai uprising; both have protagonists who are authors of
non-fiction studies on war and who have flashbacks to battles
in America; both include meetings with the Emperor and
numerous battle scenes; both are reverential toward Japanese
culture; and both feature the leader of the samurai rebellion as
an important foil to the protagonist. Finally, in both works the
American protagonist is spiritually transformed by his experi-
ence in Japan.
We agree with the district court that “[w]hile on cursory
review, these similarities may appear substantial, a closer
examination of the protectable elements, including plot,
themes, dialogue, mood, setting, pace, characters, and
sequence of events, exposes many more differences than simi-
larities between Plaintiffs’ Screenplay and Defendants’ film.”
The most important similarities involve unprotectable ele-
ments. They are shared historical facts, familiar stock scenes,
and characteristics that flow naturally from the works’ shared
basic plot premise. Stripped of these unprotected elements,
the works are not sufficiently similar to satisfy the extrinsic
test.
1. Plot and Sequence of Events
In applying the extrinsic test, we look “beyond the vague,
abstracted idea of a general plot.” Berkic v. Crichton, 761
F.2d 1289, 1293 (9th Cir. 1985). Though the Screenplay and
the Film share the same basic plot premise, a closer inspection
reveals that they tell very different stories.
In both the Screenplay and the Film, an American war vet-
eran travels to Japan in the 1870s to train the Imperial Army
in modern Western warfare in order to combat a samurai
uprising. Not surprisingly, the stories share similar elements
as a result of their shared premise. In both, the protagonist
starts in America and travels to Japan where he meets the
Emperor, who is struggling to modernize Japan. Both protag-
onists introduce modern warfare to the Imperial Army, using
8466 BENAY v. WARNER BROS. ENTERTAINMENT
contemporary Western weaponry and tactics. Both works fea-
ture a Japanese foil in the form of the leader of the samurai
rebellion. And in both works the protagonist suffers a per-
sonal crisis and is transformed as a result of his interaction
with the samurai.
[5] Despite these similarities, the two narratives are strik-
ingly different. We agree with the district court’s character-
ization:
Plaintiffs’ protagonist, Gamble, emerges from
domestic security, to despair at the loss of his son, to
revenge and triumph when he defeats his ruthless
antagonist, Saigo. In contrast, the protagonist in
Defendants’ film moves from isolation and self-
destructive behavior, to the discovery of traditional
values and a way of life that he later comes to
embrace. Thus, unlike Plaintiffs’ Screenplay, which
is largely a revenge story, Defendants’ film is more
a captivity narrative reminiscent in some respects to
Dances With Wolves.
(quotation omitted).
[6] While the works share a common premise, that premise
contains unprotectable elements. For example, there actually
was a samurai uprising in the 1870s, the Satsuma Rebellion,
led by Saigo Takamori, who is sometimes referred to as “The
Last Samurai.” See Charles L. Yates, Saigo Takamori in the
Emergence of Meiji Japan, 28 Mod. Asian Stud. 449, 449
(1994); Kenneth G. Henshall, A History of Japan: From Stone
Age to Superpower 78 (Palgrave Macmillan 2d ed. 2004)
(1999). While there is no clear historical analogue to the
American protagonist who travels to Japan to help fight the
samurai rebellion, it is not surprising that a Hollywood film
about the rebellion would insert an American character.
[7] This case is similar to Funky Films, in which the two
works at issue told the story of a small funeral home operated
BENAY v. WARNER BROS. ENTERTAINMENT 8467
by two brothers after the sudden death of their father. 462
F.3d at 1077. The works shared numerous similarities: in both
works the older brother moved home from a distant city, was
creative in contrast to his conservative younger brother, and
initially had no interest in becoming involved in the family
business; in both the business was financially fragile; in both
a rival funeral home attempted to take over the home but
failed; and in both the younger brother changed his church
affiliation in order to increase their client base. Id. at 1077-78.
However, closer examination of the works revealed one to be
essentially a murder mystery and the other to be a study of
“the way the characters struggle with life in the wake of the
cataclysmic death of [their] father.” Id. at 1078 (emphasis
omitted). We therefore held that the plots developed “quite
differently” and rejected the plaintiffs’ copyright claim. Id.
Similarly, the Screenplay and Film in the case now before us
tell fundamentally different stories, though they share the
same premise and a number of elements that follow naturally
from that premise.
2. Characters
The Benays point to similarities between various characters
in the two works, most notably the American protagonists.
But on close inspection there are only a few similarities that
have significance under copyright law. Most of the similari-
ties are either derived from historical facts or are traits that
flow naturally from the works’ shared premises. See Olson,
855 F.2d at 1451-53 (noting that only distinctive characters
are protectable, not characters that merely embody unpro-
tected ideas).
[8] The most similar characters in the two works are the
American protagonists, but the differences between them at
least equal the similarities. The Benays’ protagonist, Gamble,
begins the Screenplay as a happily married and successful
West Point professor, while the Defendants’ protagonist,
Algren, begins the Film as an unmarried loner, a drunk, and
8468 BENAY v. WARNER BROS. ENTERTAINMENT
a failure, with a meaningless job selling Winchester rifles;
Gamble’s flashbacks are to his accidental killing of eight of
his own men during a Civil War battle, while Algren’s are to
his role in a brutal attack on an innocent Indian tribe; and
Gamble gains an appreciation of Japanese culture and honor
but returns to America at the end of the Screenplay, while
Algren fully assimilates into the samurai way of life by the
end of the Film.
[9] Although both works include the leader of the samurai
rebellion as a central character, he is based on a historical fig-
ure, Saigo Takamori, and is therefore unprotected for copy-
right purposes. Moreover, the Screenplay’s Saigo is a
treacherous and ruthless warlord who deceives the Emperor,
attacks a church service resulting in the death of Gamble’s
son, and is killed by Gamble at the end of the Screenplay. By
contrast, the Film’s Katsumoto is an honorable and spiritual
samurai who respects the Emperor, fights only to preserve the
honor of the samurai way of life, and becomes a friend and
mentor to Algren by the end of the Film.
[10] The two works present the Japanese Emperor in
starkly different ways. The Emperor in both works seeks to
modernize Japan. The Screenplay’s Emperor is confident,
wise, and forward-looking. The Film’s Emperor, on the other
hand, is young and tentative, torn between modernization and
traditional Japanese culture, and is bullied by his advisors.
[11] There are a number of important characters in the
Film and the Screenplay who have no obvious parallel in the
other work. In the Screenplay, Gamble’s wife Britany and his
son Trevor play an important role in the development of the
plot. Trevor’s death is the catalyst for Gamble’s opium-aided
breakdown and is the motivation for his revenge against
Saigo. Gamble’s relationship with his wife Britany is tested
throughout the movie. The Screenplay also includes a charac-
ter named Masako, a beautiful samurai warrior who betrays
Saigo to help Gamble. In the Film, Algren is childless. He
BENAY v. WARNER BROS. ENTERTAINMENT 8469
falls in love with Taka, the widow of a samurai warrior. But
Taka plays a very different role in the Film from the roles
played by Britany and Masako in the Screenplay. Taka helps
Algren assimilate into samurai culture and shares few charac-
ter traits with Britany. Taka is graceful and giving, while Bri-
tany is fiery and strong-willed. Unlike Masako, Taka is not a
warrior. In the Screenplay, Britany’s father plays an important
role in getting Gamble to Japan and is the central figure in a
side-plot in which he attempts to break up Gamble’s marriage.
There is no parallel character or side-plot in the Film. Finally,
the Film includes Algren’s former commander during the
Indian Campaigns, whom Algren despises. There is no paral-
lel character in the Screenplay.
3. Theme
[12] The district court noted that “both works explore gen-
eral themes of the embittered war veteran, the ‘fish-out-of
water,’ and the clash between modernization and traditions.”
But to the extent the works share themes, those themes arise
naturally from the premise of an American war veteran who
travels to Japan to fight the samurai. Moreover, the works
develop those themes in very different ways. The Screenplay
exalts the Americanized modernization of Japan, expressed by
Gamble triumphantly raising the American flag over Iwo Jima
after killing Saigo. It characterizes samurai as part of an ugly
class system from Japan’s feudal past, and is largely positive
about the role of westerners in modernizing Japan. By con-
trast, the Film is ambivalent toward modernization and is nos-
talgic for disappearing Japanese traditions. The Film treats the
samurai tradition as an honorable way of life, sadly left
behind by modernization, and treats westerners as self-
interested and exploitative.
4. Settings
[13] Given that both works involve an American war vet-
eran who travels to Japan to help the Emperor fight a samurai
8470 BENAY v. WARNER BROS. ENTERTAINMENT
rebellion, it is not surprising that they share certain settings:
a scene of the protagonist sailing into Japan, scenes in the
Imperial Palace, scenes on the Imperial Army’s training
grounds, and battle scenes in various places in Japan. These
are all scenes-a-faire that flow naturally from the works’
shared unprotected premise and are therefore disregarded for
purposes of the extrinsic test. See Cavalier, 297 F.3d at 824
(“[T]his setting naturally and necessarily flows from the basic
plot premise . . . [and] therefore . . . constitutes scenes-a-faire
and cannot support a finding of substantial similarity.”).
[14] Some of the settings are strikingly dissimilar. As the
district court noted, the “American settings of the two works
are drastically different.” The Screenplay opens at West Point
with a classroom scene, a snowball fight, and a scene in Gam-
ble’s comfortable home. The Film, on the other hand, opens
at a San Francisco convention hall where the drunk Algren is
hawking Winchester rifles. In Japan, the Screenplay includes
scenes in samurai castles and in an opium den where Gamble
has a spiritual crisis, none of which is in the Film. The Film
includes extended scenes in a samurai village. No such village
appears in the Screenplay.
5. Mood and Pace
[15] Both works contain violent action scenes. But we
agree with the district court that the Screenplay “has a trium-
phant mood” and “is a fast-paced adventure/intrigue story,”
while the Film “is more nostalgic and reflective in mood” and
employs “leisurely sequences” in addition to its battle scenes.
The two works have opposing perspectives on the moderniza-
tion of Japan and the end of samurai culture. Further, the pac-
ing of the two works is substantially different. The Screenplay
jumps from battle scene to battle scene, while the Film has a
long period of relative calm in which Algren is held in captiv-
ity in the samurai village.
BENAY v. WARNER BROS. ENTERTAINMENT 8471
6. Dialogue
[16] There are limited similarities in dialogue between the
two works. The Benays point to both works’ use of the term
“gaijin.” But this word, which means “foreigner” or “strang-
er” in Japanese, naturally flows from the narrative of an
American military advisor in Japan. See Grosso v. Miramax
Film Corp., 383 F.3d 965, 967 (9th Cir. 2004) (finding no
substantial similarity where “the only similarities in dialogue
between the two works come from the use of common, unpro-
tectable poker jargon”). The Benays also point to the use of
voice-overs by the protagonists in the two works. But the use
of voice-overs is a common cinematic technique. A signifi-
cant difference between the dialogues is that the Screenplay
is written almost entirely in English (except for occasional
words like “gaijin”), whereas the Film contains substantial
exchanges entirely in Japanese. Cf. Shaw, 919 F.2d at 1358
(finding dialogue similar where “Plaintiffs’ expert has set
forth, side-by-side, dialogue from a variety of characters
which almost match”).
7. Title
[17] A title standing alone cannot be copyrighted, but the
copying of a title “may . . . have copyright significance as one
factor in establishing” an infringement claim. Shaw, 919 F.2d
at 1362 (quotation omitted). The Benays make much of the
fact that the two works share the title “The Last Samurai.”
The Defendants respond that the identity of titles is not signif-
icant because Saigo Takamori, the historical figure on which
much of the Film is based, is sometimes referred to as “The
Last Samurai.” See Charles L. Yates, supra, at 449. The lim-
ited copyright significance of the shared title in this case is
insufficient to overcome the overall lack of similarities
between protected elements of the works.
8. Summary
[18] “At a very high level of generality, both works share
certain plot similarities.” Funky Films, 462 F.3d at 1081. “But
8472 BENAY v. WARNER BROS. ENTERTAINMENT
‘[g]eneral plot ideas are not protected by copyright law; they
remain forever the common property of artistic mankind.’ ”
Id. (quoting Berkic, 761 F.2d at 1293); see also Cavalier, 297
F.3d at 824 (“[B]asic plot ideas, such as this one, are not pro-
tected by copyright law.”). A number of similarities between
the works arise out of the fact that both works are based on
the same historical events, take place at the same time and in
the same country, and share similar themes. These similarities
are largely between unprotected elements—historical facts,
characteristics that flow naturally from their shared premise,
and scenes-a-faire. See Berkic, 761 F.2d at 1293-94. Consid-
ering the Screenplay and the Film in their entireties, we con-
clude that the district court was correct in granting summary
judgment to the Defendants on the Benays’ federal copyright
claim.
B. Breach of Contract Claim
The Benays assert a claim for breach of an implied-in-fact
contract under California law. Contract law, whether through
express or implied-in-fact contracts, is the most significant
remaining state-law protection for literary or artistic ideas.
Other previously important state-law protections, such as
those against plagiarism, have been preempted by federal
copyright law. See 4 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright (“Nimmer”) § 19D.02 (Matthew
Bender, rev. ed. 2009). Contract claims for protection of ideas
are not preempted by copyright law because they “allege an
‘extra element’ that changes the nature of the action.” Grosso,
383 F.3d at 968. That “extra element” is the agreement
between the parties that the defendant will pay for the use of
the plaintiff’s ideas, independent of any protection offered by
federal copyright law. Id.
[19] To establish a case for breach of an implied-in-fact
contract based on the submission of their Screenplay, the
Benays must establish that: (1) they submitted the Screenplay
for sale to Defendants; (2) they conditioned the use of the
BENAY v. WARNER BROS. ENTERTAINMENT 8473
Screenplay on payment; (3) Defendants knew or should have
known of the condition; (4) Defendants voluntarily accepted
the Screenplay; (5) Defendants actually used the Screenplay;
and (6) the Screenplay had value. Mann v. Columbia Pictures,
Inc., 128 Cal. App. 3d 628, 647 n.6 (Ct. App. 1982); see also
Faris v. Enberg, 97 Cal. App. 3d 309, 318 (Ct. App. 1979).
It is settled law in California that novelty is not required for
an implied-in-fact contract claim arising out of unauthorized
use. See Desny v. Wilder, 46 Cal. 2d 715, 733 (1956) (disclo-
sure of an idea may be protected by “contract providing that
it will be paid for regardless of its lack of novelty” (quotation
omitted)); Chandler v. Roach, 156 Cal. App. 2d 435, 441-42
(Ct. App. 1957). Defendants do not rely on any purported lack
of novelty in the Benays’ Screenplay. Instead, they contend
that we should affirm the district court on any of three
grounds. A grant of summary judgment may be affirmed on
an alternative ground so long as that ground is fairly sup-
ported by the record. See Security Life Ins. Co. of Am. v.
Meyling, 146 F.3d 1184, 1190 (9th Cir. 1998). The three
grounds on which Defendants rely are: (1) the Benays cannot
establish the requisite fifth element of their contract claim,
actual use of the Screenplay by the Defendants; (2) the
Benays failed to file their contract claim within two years of
the breach of contract, as required by the California statute of
limitations; and (3) there was no privity of contract between
the Benays and any of the Defendants other than Bedford
Falls. We decline to affirm on any of these three grounds.
1. Actual Use of the Screenplay by Defendants
It is undisputed that defendants Edward Zwick and John
Logan were working on a script entitled West of the Rising
Sun before the Benays’ Screenplay was pitched to Richard
Solomon. In West of the Rising Sun, a Civil War veteran joins
a samurai and helps him lead a cattle drive in Japan. On April
12, 2000, Zwick sent a fax to Logan in which he described the
theme of West of the Rising Sun: “There’s some nice political
8474 BENAY v. WARNER BROS. ENTERTAINMENT
intrigue: a cattle drive to a starving city as provocation for a
civil war; a rich and modern metaphor in the introduction of
an American passion (beef) and an American agenda (trade),
to a culture that has lived happily for thousands of years with-
out either.” The Benays’ agent pitched the Screenplay to Sol-
omon about a month later, sometime between May 9 and 12,
and delivered it to Solomon on May 16.
West of the Rising Sun eventually evolved into the Film,
The Last Samurai. The Film differs from West of the Rising
Sun, and resembles the Screenplay, in two particularly impor-
tant respects. First, the Civil War veteran is no longer a trans-
planted American cowboy helping to lead a Western-style
cattle drive; he is now a military expert helping to modernize
the Japanese Imperial Army. Second, the veteran no longer
comes to Japan to work side-by-side with the samurai; he now
comes to Japan to fight against the samurai. The parties dis-
pute when this evolution took place and what, if anything, the
evolution owes to the Benays’ Screenplay.
Defendants’ argument on appeal is not based on a factual
contention that defendants Zwick and Logan did not have
access to, and therefore could not have used, the ideas in the
Benays’ screenplay in transforming West of the Rising Sun
into the Film. Rather, Defendants contend that the Screenplay
and the Film lack substantial similarity and that therefore, as
a matter of law, the Benays cannot prove use of their Screen-
play under California contract law.
[20] Similar to the inference of copying in copyright law,
California contract law “permits actual use of a plaintiff’s
idea to be inferred from evidence of access and . . . . [T]his
inference is not binding; defendant can rebut it through con-
trary evidence.” 4 Nimmer § 19D.07[C]; see Mann, 128 Cal.
App. 3d at 647-48. In breach of contract claims, the level of
similarity that permits an inference of actionable use depends
on the nature of the agreement between the parties. See 4
Nimmer § 19D.08. In cases of explicit contracts where the
BENAY v. WARNER BROS. ENTERTAINMENT 8475
terms of the agreement are spelled out, the level of similarity
required depends on those terms. See 4 Nimmer § 19D.08[B]
(comparing Fink v. Goodson-Todman Enters., 9 Cal. App. 3d
996, 1008-13 (Ct. App. 1970) (where contract required pay-
ment for any work “based upon” the submitted work, court
required substantial similarity between the works), with Weit-
zenkorn v. Lesser, 40 Cal. 2d 778, 792 (1953) (theoretically,
parties could agree that the defendants must pay for any use
“no matter how slight or commonplace the portion which they
used”), and Jay S. Kenoff & Richard K. Rosenberg, “Form 9-
3 Producer Multi-Picture Employment Agreement with Com-
mentary,” in Entertainment Industry Contracts (Donald C.
Farber & Peter A. Cross eds., 2006) (form contract whereby
studio agrees to pay for submitted ideas whether or not they
are ultimately used)).
[21] Where the contract is implied-in-fact rather than
explicit, the parties have not specified any standard. In such
cases, “the weight of California authority is that there must be
‘substantial similarity’ between plaintiff’s idea and defen-
dant’s production to render defendant liable.” 4 Nimmer
§ 19D.08[A] (citing Kurlan v. Columbia Broad. Sys., Inc., 40
Cal. 2d 799, 809 (1953); Sutton v. Walt Disney Prods., 118
Cal. App. 2d 598, 603 (Ct. App. 1953); Whitfield v. Lear 751
F.2d 90, 93 (2d Cir. 1984)). The requirement of substantial
similarity for implied-in-fact contract claims “aligns this field
with copyright infringement . . . . [and] also means that copy-
ing less than substantial material is non-actionable.” Id.
“Courts have specifically rejected the contention that liability
could be imposed on defendants on the basis of less than sub-
stantial similarities.” Id.
[22] However, “[f]rom the invocation of the copyright
term ‘substantial similarity’ it does not follow . . . that plain-
tiffs in idea-submission cases must prove substantial similar-
ity of copyright-protected elements.” Id. Rather, because the
claim is based in contract, unauthorized use can be shown by
substantially similar elements that are not protected under
8476 BENAY v. WARNER BROS. ENTERTAINMENT
copyright law. “ ‘There is nothing unreasonable in the
assumption that a producer would obligate himself to pay for
the disclosure of an idea which he would otherwise be legally
free to use, but which in fact, he would be unable to use but
for the disclosure.’ ” Blaustein v. Burton, 9 Cal. App. 3d 161,
183 (Ct. App. 1970) (quoting Chandler, 156 Cal. App. 2d at
441-42). Therefore, our holding (above) that the Screenplay
and the Film are not substantially similar for purposes of
copyright infringement does not preclude a finding of sub-
stantial similarity for purposes of an implied-in-fact contract
under California law. See Grosso, 383 F.3d at 967 (affirming
grant of summary judgment for defendants on copyright claim
due to lack of substantial similarity, but remanding claim of
breach of an implied-in-fact contract).
Defendants argue that because the Benays submitted a
completed screenplay we must analyze their contract claim in
the same manner as their copyright claim. Defendants’ argu-
ment is counterintuitive. They concede that if the Benays had
submitted in outline form the idea of an American Civil War
veteran who helps modernize the Japanese Imperial Army and
fights against the samurai, the Benays would be protected
against unauthorized use under an implied-in-fact contract
though not under copyright law. But they argue that because
the idea was embodied in a completed screenplay, an implied-
in-fact contract can provide no protection beyond that already
provided by copyright law.
[23] California case law does not support the proposition
that when a complete script is submitted under an implied-in-
fact contract, only those elements of the script that are pro-
tected under federal copyright law are covered by the con-
tract. In Ware v. Columbia Broadcasting System, Inc., 253
Cal. App. 2d 489, 494-96 (Ct. App. 1967), the court of appeal
was unwilling to find breach of an implied-in-fact contract
where the only similarity between the plaintiff’s completed
script and the defendant’s television episode was that the pro-
tagonists in both spoke to inanimate figures (a mannequin in
BENAY v. WARNER BROS. ENTERTAINMENT 8477
one and a miniature museum exhibit in the other) and in the
end themselves became inanimate figures. Id. at 490-91. The
court in Ware did not hold that a plaintiff who has submitted
a completed script can have no contract-based protection of
the ideas in that script beyond that afforded by copyright law.
The court suggested that the outcome might have been differ-
ent if the plaintiff had submitted only the basic idea of a pro-
tagonist who speaks with inanimate figures and then becomes
such a figure. But the plaintiff in that case alleged an implied
contract in which the use of an entire “literary property,”
rather than merely the use of a concept or idea, was offered
for sale: “Plaintiff does not allege that the parties contracted
with respect to any idea, synopsis, or format. Literary prop-
erty is what plaintiff had for sale; that is what he submitted
to defendants, and that is the subject matter of his complaint.”
Id. at 494.
In Donahue v. Ziv Television Programs, Inc., 245 Cal. App.
2d 593, 597, 601 (Ct. App. 1966), the court of appeal held
that actionable use existed if there were “enough similarities
in basic plot ideas, themes, sequences and dramatic ‘gim-
micks’ ” between plaintiffs’ submission of a “format in writ-
ten form, together with twelve story outlines, one screenplay
and a proposed budget,” and defendants’ television series. In
Desny, the California Supreme Court reversed a grant of sum-
mary judgment for defendants after comparing elements of
plaintiff’s submitted synopsis to a synopsis of defendants’
photoplay. 46 Cal. 2d at 746-50. In Blaustein, the court found
a triable issue of fact as to use after comparing the defen-
dants’ movie with plaintiff’s idea to film Shakespeare’s “The
Taming of the Shrew” in Italy, with Richard Burton and Eliz-
abeth Taylor starring, Franco Zeffirelli directing, and various
scenes cut from or added to the play. 9 Cal. App. 3d at 184.
In Grosso, we recognized that the analysis of similarity
under an implied-in-fact contract claim is different from the
analysis of a copyright claim, even where the plaintiff has
submitted a full copyright-protected script. 383 F.3d at 967-
8478 BENAY v. WARNER BROS. ENTERTAINMENT
68. In that case, we affirmed summary judgment for the
defendant on the copyright claim because we agreed with the
district court that the defendants’ movie was not substantially
similar to the plaintiff’s screenplay. Id. But despite this con-
clusion, we reversed the grant of summary judgment as to the
implied-in-fact contract claim and remanded to the district
court. Id.
[24] As noted above, the Screenplay and the Film share a
number of similarities. Most notably, in both works, the pro-
tagonist is an embittered American war veteran who travels to
Japan where he meets the Emperor, trains the Imperial Army
in modern warfare, fights against the samurai, and in the end
is spiritually restored. Both works are set at the time of the
Satsuma Rebellion of 1877; both works rely heavily on the
historical figure Saigo Takamori; and both works share the
same title. These similarities are substantial for purposes of an
implied-in-fact contract under California law.
[25] We emphasize that we do not here decide whether,
and to what degree, these similarities are due to use of the
Benays’ Screenplay by Defendants. Suffice it to say that there
may be evidence in the record from which a reasonable fact-
finder could find unauthorized use by the Defendants. We
leave to the district court on remand the task of determining
whether there was unauthorized use by Defendants of ele-
ments or ideas from the Benays’ Screenplay.
2. Statute of Limitations
[26] Defendants argue that the Benays filed their claim
more than two years after their claim accrued, and that the
claim is therefore barred by the statute of limitations. See
Blaustein, 9 Cal. App. 3d at 185 (two year statute of limita-
tions for implied-in-fact contract claims, under California
Civil Procedure Code § 339). The Benays filed their claim
exactly two years after the release of the Film. Therefore, if
their claim accrued at any point before the Film’s release, it
BENAY v. WARNER BROS. ENTERTAINMENT 8479
is time-barred. The district court rejected Defendants’ argu-
ment that as a matter of law the statute of limitations began
to run before the first public release of the film. We agree
with the district court.
Defendants contend that the date of accrual depends on
when the Benays became aware of Defendants’ use of the
Screenplay. Defendants argue that the Benays knew about the
development of the Film before it was released, and that their
claim therefore accrued before that date. However, the accrual
date of an implied-in-fact contract claim “depends on the
nature of [Defendants’] obligation, if any, to [the Benays].”
Blaustein, 9 Cal. App. 3d at 185. In Blaustein, the court of
appeal refused to find on a motion for summary judgment that
the action was barred by the statute of limitations:
A trier of fact might conclude that [the actionable]
use was intended to occur the moment a preliminary
script is written embodying [plaintiff’s] idea, even if
in fact no motion picture production, based upon
such script, ever occurs. The court might also find
that the implied promise to pay arose upon respon-
dents’ disclosure of the idea to a substantial segment
of the public since such use would tend to destroy
any further marketability of the idea.
Id. at 186.
[27] Because the parties’ intent is difficult to ascertain in
implied-in-fact contract cases, California courts generally
assume that the accrual date is the date on which the work is
released to the general public:
[In] implied contract cases, the parties will not have
defined the requisite use. Accordingly, in the
absence of any reason to hold otherwise, only a use
that “disclosed the idea to a substantial segment of
the public” should be regarded as the kind of use
8480 BENAY v. WARNER BROS. ENTERTAINMENT
requiring payment. For only that type of use “would
certainly destroy any further marketability of the
idea.”
4 Nimmer § 19D.07[D] (quoting Thompson v. Cal. Brewing
Co., 191 Cal. App. 2d 506, 510 (Ct. App. 1961)).
[28] In Davies v. Krasna, 14 Cal. 3d 502, 511-12 (1975),
the California Supreme Court noted that “[a] suit for breach
of an implied contract not to exploit an idea without paying
for it does arise only with the sale or exploitation of the idea.”
14 Cal. 3d at 511-12. In Thompson, the court of appeal held
that extensive “test” advertising in San Diego and Sacramento
started the running of the statute of limitations only because
it “immediately disclosed the idea to a substantial segment of
the public,” which “would certainly destroy any further mar-
ketability of the idea.” 91 Cal. App. 2d at 510. In Donahue v.
United Artists Corp., 2 Cal. App. 3d 794, 802 (Ct. App.
1969), the court of appeal wrote that “the private auditioning
of a film to national advertising agencies” did not compare
with “the exhibition of the idea to ‘a substantial segment of
the public in two metropolitan centers in this state,’ ” and
therefore did not cause the action to accrue. The court held
that the cause of action accrued at the later time, when the
idea was exhibited to a “substantial segment of the public.”
Id.
3. Privity of Contract
Finally, Defendants argue that there was privity of contract
only between the Benays and Bedford Falls, and that the
Benays’ contract claim must therefore be dismissed as to all
other defendants. Privity between the parties is a necessary
element of an implied-in-fact contract claim. See Rokos v.
Peck, 182 Cal. App. 3d 604, 617-18 (Ct. App. 1986); Mann,
128 Cal. App. 3d at 647 n.6. The Benays point out that Defen-
dants did not make their privity-of-contract argument in the
district court. The Benays therefore did not have an opportu-
BENAY v. WARNER BROS. ENTERTAINMENT 8481
nity to organize and present evidence in the district court in
response.
We decline to reach the question whether there is privity of
contract between the Benays and defendants other than Bed-
ford Falls. We leave it to the district court to decide this ques-
tion if and when it is properly presented by Defendants.
Conclusion
We affirm the district court’s grant of summary judgment
for Defendants on the Benays’ copyright infringement claim.
We reverse the grant of summary judgment on the Benays’
breach of contract claim and remand for further proceedings
consistent with this opinion. We award costs on appeal to the
Benays.
AFFIRMED IN PART AND REVERSED IN PART.