## Facts

- Aaron and Matthew Benay wrote a screenplay titled *The Last Samurai* between 1997–1999, registered it with the Writers Guild of America in 1999, and registered it with the U.S. Copyright Office in 2001.
- In May 2000, the Benays’ agent pitched the screenplay to Bedford Falls Productions and delivered a copy with an asserted industry-based expectation that the writers would be compensated if the material was used.
- Bedford Falls responded that it would not proceed because it already had a similar project in development.
- Warner and related defendants produced and released the film *The Last Samurai* in December 2003.
- The Benays sued in 2005 alleging (1) copyright infringement and (2) breach of an implied-in-fact contract under California idea-submission principles.
- The district court granted summary judgment to defendants on both claims.
- The Benays appealed.

## Issues

1. Whether the film was substantially similar, under the Ninth Circuit extrinsic test, to protectable elements of the screenplay such that summary judgment on copyright infringement was improper.
2. Whether the evidence created a triable issue that an implied-in-fact idea-submission contract existed and was breached by use without compensation.
3. Whether the implied-in-fact contract claim was preempted by the Copyright Act.

## Decision

- Affirmed summary judgment for defendants on the copyright claim.
- Reversed summary judgment for defendants on the implied-in-fact contract claim and remanded for further proceedings.
- Held the implied-in-fact contract claim was not preempted by federal copyright law.

## Legal Principles

- Copyright infringement requires copying and unlawful appropriation; at summary judgment, the court applies the extrinsic test to compare objectively the works’ protectable expressive elements.
- Historical facts, general ideas, common themes, and scènes à faire are not protectable and must be filtered out before assessing substantial similarity.
- Works sharing a historical setting and premise may still be dissimilar in protectable expression where plot structure, character construction, and specific sequences materially differ.
- Under California idea-submission law, an implied-in-fact contract may arise when (i) a writer submits material with an expectation of payment, (ii) the recipient knows or should know the condition, (iii) the recipient accepts the submission, and (iv) the recipient uses the ideas, triggering an obligation to pay.
- A California implied-in-fact contract claim based on a promise to pay contains an extra element beyond the exclusive rights protected by copyright and is therefore not preempted.

## Conclusion

The Ninth Circuit held that no reasonable jury could find substantial similarity in protectable expression between the screenplay and the film, but it allowed the writers to proceed on a California implied-in-fact idea-submission theory because evidence could support an industry-understood promise to pay if the submitted ideas were used, and that contractual claim was not preempted.


Benay v. Warner Bros. Ent. Inc., 607 F.3d 620 (9th Cir. 2010)