NOT FOR PUBLICATION FILED
UNITED STATES COURT OF APPEALS JUL 22 2020
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
ARTHUR LEE ALFRED II; et al., No. 19-55669
Plaintiffs-Appellants, D.C. No.
2:18-cv-08074-CBM-AS
v.
THE WALT DISNEY COMPANY; et al., MEMORANDUM*
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
Consuelo B. Marshall, District Judge, Presiding
Argued and Submitted July 6, 2020
Pasadena, California
Before: PAEZ and BADE, Circuit Judges, and MELGREN,** District Judge.
Plaintiffs A. Lee Alfred, II, Ezequiel Martinez, Jr., and Tova Laiter appeal
the district court’s 12(b)(6) dismissal of their copyright infringement suit against
Defendant-Appellees (collectively, “Defendants”). They argue that the court (1)
erred in granting Defendants’ motion to dismiss because Plaintiffs’ screenplay is
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The Honorable Eric F. Melgren, United States District Judge for the
District of Kansas, sitting by designation.
substantially similar to Defendants’ Pirates of the Caribbean: Curse of the Black
Pearl film; (2) abused its discretion in denying Plaintiffs leave to amend their
complaint; and (3) abused its discretion in taking judicial notice of the Disney
World Pirates of the Caribbean theme park ride as it existed in 2005. We have
jurisdiction over the court’s dismissal under 28 U.S.C. § 1291. For the reasons that
follow, we reverse and remand.
1. To state a claim for copyright infringement, Plaintiffs must show that (1)
they owned a valid copyright in their screenplay, and (2) Defendants copied
protected aspects of their work. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499
U.S. 340, 361 (1991). The element prohibiting Defendant from copying protected
aspects requires that Plaintiffs demonstrate that there are, in short, “substantial
similarities” between the two works. Skidmore v. Zeppelin, 952 F.3d 1051, 1064
(9th Cir. 2020) (en banc). At the pleading stage, district courts apply only the
“extrinsic test” for similarity, which asks whether the defendant’s work shares
objective similarities of specific expressive elements with the allegedly infringed
piece. Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018), overruled
on other grounds by Skidmore, 952 F.3d 1051. Defendants moved to dismiss
Plaintiffs’ copyright infringement claims solely on the ground that the two works
were not substantially similar as a matter of law.
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When evaluating the two works, courts must generally distinguish between
protectible and unprotectible elements, and “ask only whether the protectible
elements in two works are substantially similar.” L.A. Printex Indus., Inc. v.
Aeropostale, Inc., 676 F.3d 841, 849 (9th Cir. 2012), abrogated on other grounds
as recognized by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194
(9th Cir. 2020). But—even when individual elements are not protected—their
“[o]riginal selection, coordination, and arrangement . . . may be protectible
expression.” Id.. Summary judgment or dismissal is appropriate if, taken as a
whole, “no reasonable jury could find that the works are substantially similar using
the objective criteria of the extrinsic test.” Kouf v. Walt Disney Pictures &
Television, 16 F.3d 1042, 1045 (9th Cir. 1994).
We agree with Plaintiffs that the screenplay shares sufficient similarities
with the film to survive a motion to dismiss. The Pirates of the Caribbean: Curse
of the Black Pearl film and the screenplay both begin with a prologue that takes
place ten years prior to the main story; introduce the main characters during a
battle, at gunpoint; involve treasure stories that take place on islands and in jewel-
filled caves; include past stories of betrayal by a former first mate; contain fearful
moments driven by skeleton crews; focus on the redemption of a young, rogue
pirate; and share some similarities in dialogue and tone. To be sure, there are
striking differences between the two works, as well—but the selection and
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arrangement of the similarities between them is more than de minimis. See Apple
Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994).
The district court noted some of these similarities but dismissed the action
largely because it concluded that many of the elements the two works share in
common are unprotected generic, pirate-movie tropes. But, at this stage of the
litigation, it is difficult to know whether such elements are indeed unprotectible
material. Additional evidence would help inform the question of substantial
similarity. Cf. Rentmeester, 883 F.3d at 1123 (“This is not a case in which
discovery could shed light on any issues that actually matter to the outcome.”). As
Plaintiffs note, expert testimony would aid in determining whether the similarities
Plaintiffs identify are qualitatively significant. See Newton v. Diamond, 388 F.3d
1189, 1196 (9th Cir. 2004). This would be particularly useful in this circumstance,
where the works in question are almost twenty years old and the blockbuster
Pirates of the Caribbean film franchise may itself have shaped what are now
considered pirate-movie tropes.
The district court erred by failing to compare the original selection and
arrangement of the unprotectible elements between the two works. Because
Plaintiffs sufficiently allege that there are substantial similarities between the
works to survive Defendants’ motion-to-dismiss, we reverse the district court’s
dismissal and remand.
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2. The district court did not err by failing to apply the inverse-ratio rule.
Sitting en banc, we overruled the inverse-ratio doctrine after the district court’s
decision. In Skidmore, we concluded that the rule “is not part of the copyright
statute, defies logic, and creates uncertainty for the courts and the parties,” and
“abrogate[d] the rule in the Ninth Circuit and overrule[d] our prior cases to the
contrary.” 952 F.3d at 1066. Even if Plaintiffs are correct that the court should
have applied the doctrine, Skidmore has since mooted their argument.
3. The court also did not err by failing to accord broad copyright protection
to Plaintiffs’ screenplay. Plaintiffs are correct that the idea of pirate films or
stories are entitled to broad—not narrow—copyright protection, see, e.g., Mattel,
Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010), but the district
court did not once state that the screenplay was entitled to thin protection or
require Plaintiffs to show that the two works were virtually identical. We cannot
conclude that the court erred by treating the screenplay as entitled to thin
protection.
4. Finally, in light of the above disposition, we need not address whether the
district court abused its discretion either in denying Plaintiffs leave to amend their
complaint or in taking judicial notice of the Disney World theme park ride. These
issues are now moot. On remand, Plaintiffs may again request leave to amend
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their complaint, and both sides will be able to produce additional, relevant
evidence as is needed.
REVERSED and REMANDED.
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