## Facts

- Canal+ owned the U.S. copyright in the 1949 film *Kind Hearts and Coronets*, a derivative work based on the 1907 novel *Israel Rank*, which was in the public domain.
- Defendants Steven Lutvak and Robert L. Freedman wrote a stage musical initially developed under an agreement with Canal+ to adapt the film.
- Canal+ chose not to produce or further exploit the musical under the agreement.
- After learning the film was based on a public-domain novel, defendants revised the musical to track the novel’s plot and remove elements they understood to be unique to the film.
- Defendants retained a prominent device associated with the film: using a single actor to portray multiple murder victims.
- Canal+ sued for (1) copyright infringement, alleging copying of the film’s “total concept and feel” and specific elements claimed to be original to the film, and (2) breach of contract based on defendants’ continued development and exploitation of the musical.

## Issues

1. Whether, after excluding material taken from the public-domain novel and other unprotectable elements, the musical was substantially similar to protectable expression in the film.
2. Whether the use of a single actor to play multiple roles (including multiple victims) is protectable expression or an unprotectable dramatic convention.
3. Whether the breach-of-contract claim was preempted by 17 U.S.C. § 301 because it asserted rights equivalent to those protected by copyright.

## Decision

- The court granted defendants’ Rule 12(b)(6) motion and dismissed all claims.
- The court held that no reasonable jury could find substantial similarity between the musical and the protectable aspects of the film.
- The court held the single-actor, multiple-role device was a standard theatrical/film convention and not protectable expression in this context.
- The court held the breach-of-contract claim was preempted because it did not plead a qualitatively different “extra element” beyond rights equivalent to copyright’s exclusive rights.

## Legal Principles

- For a derivative work based on a public-domain source, copyright protection extends only to the original material added by the derivative author, not to material taken from the public-domain work.
- Where a work contains both protectable and unprotectable elements, substantial similarity is assessed using a “more discerning observer” approach that compares only protectable expression, while also considering the works’ overall “total concept and feel.”
- Conventional dramatic devices and scènes à faire (including standard staging techniques such as one performer playing multiple roles) are not protectable expression merely because they are used memorably in a particular work.
- A state-law contract claim is preempted under 17 U.S.C. § 301 when it targets works within copyright’s subject matter and asserts rights equivalent to copyright, absent an extra element that makes the claim qualitatively different.

## Conclusion

The court dismissed Canal+’s infringement claim because the film’s protectable contributions over the public-domain novel were minimal and were not meaningfully replicated in defendants’ musical, and it dismissed the contract claim because it amounted to an attempt to enforce copyright-equivalent rights without a distinct contractual duty.


Canal+ Image UK Ltd. v. Lutvak, 773 F. Supp. 2d 419 (S.D.N.Y. 2011)