Hallford v. Fox Entertainment Group, Inc. et al
MEMORANDUM & ORDER granting 14 Motion to Dismiss. For the foregoing reasons, Defendants Fox Entertainment Group Inc., Peter F. Chemin, Chemin Entertainment LLC, Richard Timothy Kring, Tailwind Productions, and Kiefer Sutherland's motion to dismiss Hallford's amended complaint is granted. The Clerk of the Court is directed to terminate all pending motions, mark this case as closed, and enter judgment for Defendants. (Signed by Judge William H. Pauley, III on 2/13/2013) (mro)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
12 Civ. 1806 (WHP)
MEMORANDUM & ORDER
-againstFOX ENTERTAINMENT GROUP, INC., et al.,
WILLIAM H. PAULEY III, District Judge:
Plaintiff Everette Hallford brings this copyright infringement action against
Defendant Fox Entertainment Group, Inc. and others affiliated with the television program
Touch. Defendants Fox Entertainment Group, Inc., Peter F. Chemin, Chemin Entertainment
LLC, Richard Timothy Kring, and Kiefer Sutherland move to dismiss Hallford's amended
complaint. For the following reasons, Defendants' motion is granted and the amended complaint
Hallford alleges that Touch is substantially similar to his screenplay Prodigy and
infringes his copyright.
I. Hallford's Prodigy
Prodigy tells the story of Frank Glen, an investigative journalist who, with the
help of an autistic boy named Jonathan, solves a mystery about a man who prevented a train
accident. Prodigy explores Frank's loss of his wife, his recurring nightmares of a train accident,
and Jonathan's struggle to communicate with the outside world. (Deciaration of Jonathan Zavin,
dated July 6, 2012 ("Zavin Decl."), Ex. A: Prodigy ("Prodigy"), at 15.)
Jonathan is "in practical tenns  an orphan." (Prodigy at 7.) His father
abandoned him and he spent most of his life in institutions. He "lives in a world where
everything around him is in reverse." (Prodigy at 9.) He wishes to speak to others, but,
whenever he attempts to do so, his speech comes out backwards. (Prodigy at 7.) Frank is able to
communicate with Jonathan by playing his speech backward after recording it on a tape-recorder.
(Prodigy at 9.) Frank discovers that Jonathan is able to connect seemingly random events.
According to Frank, Jonathan possesses "a capacity for empathy so developed that he not only
experiences the intense emotional states of other people, but he can experience some of their
thoughts as well." (Prodigy at 37.) Frank bonds with Jonathan and they become friends.
(Prodigy at 78.)
Later, Frank and Jonathan visit the site of a narrowly averted train accident.
There, Jonathan helps Frank find the business card of the man who prevented the train collision.
Jonathan then collapses and is rushed to a hospital. (Prodigy at 92.) At the hospital, all of the
characters come together for a vigil while Jonathan is in a coma. (Prodigy at 123.) When
Jonathan awakens, his reverse speech disorder is cured, and he reconciles with his father.
(Prodigy at 122.) Frank then interviews the man who saved the train and writes a story about it.
Prodigy ends with the main characters celebrating Jonathan's birthday. (Prodigy at 131.)
II. Fox's Touch
Touch is television series on Fox. It is the story of a boy and his father, Martin
Bohm, a baggage handler at JFK airport. Martin cannot communicate with his son, Jake. (Zavin
Decl. Ex. C: Pilot ("Touch Pilot"), at 1: 17-1 :32.) But when Martin discovers that Jake can
predict events before they happen, he finds a way to connect to his son. Jake has a gift for
mathematical patterns and the ability to see how various people are destined to find one another.
With the help of his father, Jake connects people whose lives should touch.
The pilot weaves together seemingly unrelated plotlines, which eventually
coalesce through a single cellular telephone. Jake repeatedly runs away and climbs a cellular
telephone tower at precisely 3:18 p.m. As a result, Child and Family Services dispatches Clea
Hopkins to investigate whether Martin is able to take care of his son. Clea learns that Jake
cannot talk and hates to be touched, even by his father. (Touch Pilot at 16:10-16:26.) She
removes Jake to an institution that cares for autistic children. While Jake is gone, Martin
attempts to decipher the clues that Jake left him. Following these clues, Martin finds Professor
Arthur Teller of the Teller Institute who explains Jake's unique ability to Martin. During the
pilot, Jake connects the lives of his father, another father who is searching for a cell phone
containing photos of his daughter, an Iraqi teen who desperately needs an oven for his family, a
promising singer in Dublin, and a New York firefighter who wins the lottery.
1. Standard of Review
On a motion to dismiss, a court must accept the material facts alleged in the
complaint as true and construe all reasonable inferences in plaintiff's favor. See Grandon v.
Merrill Lynch & Co., 147 F.3d 184, 188 (2d Cir. 1998). Nonetheless, "factual allegations must
be enough to raise a right of relief above the speculative level, on the assumption that all of the
allegations in the complaint are true." Bell Ad. Corp. v. Twombly, 540 U.S. 544, 556 (2007)
(requiring plaintiff to plead "enough fact[sJ to raise a reasonable expectation that discovery will
reveal evidence of [his claim]"). "To survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.;;;
Ashcroft v. Igbal, 556 U.S. 662, 678 (2009) (quoting Twombly, 555 U.S. at 570). "The
plausibility standard is not akin to a 'probability requirement,' but it asks for more than a sheer
possibility that a defendant has acted unlawfully." Iqbal, 556 U.S. at 678 (citation omitted). "A
court ruling on such a motion may not properly dismiss a complaint that states a plausible
version of the events merely because the court finds a different version more plausible."
Anderson News, LLC, et al. v Am. Media Inc., et aI., 680 F.3d 162, 185 (2d Cir. 2012). "A
pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements ofa cause
of action will not do.' Nor does a complaint suffice if it tenders 'naked assertion[sJ' devoid of
'further factual enhancement.'" Igbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555).
A court's "consideration [on a motion to dismiss] is limited to facts stated on the
face of the complaint, in documents appended to the complaint or incorporated in the complaint
by reference, and to matters of which judicial notice may be taken." Allen v. WestPoint
Pepperell, Inc., 945 F.2d 40, 44 (2d Cir. 1991).
II. Copyright Infringement
"[A] copyright does not protect an idea, but only the expression of an idea."
Williams v. Crichton, 84 F.3d 581,587 (2d Cir. 1996) (internal quotation marks omitted). "The
distinction between an idea and its expression is an elusive one." Williams, 84 F.3d at 587-88.
The Second Circuit has often relied on Judge Hand's explanation of the distinction:
Upon any work, ... a great number of patterns of increasing generality
will fit equally well, as more and more of the incident is left out. The last
may perhaps be no more than the most general statement of what the
[work] is about, and at times might consist only of its title; but there is a
point in this series of abstractions where they are no longer protected,
since otherwise the [author] could prevent the use of his 'ideas,' to which,
apart from their expression, his property is never extended.
Williams, 84 F.3d at 588 (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.
1930). Thus, "the inquiry often turns on the level of abstraction or generalization of the works
being compared." Attia v. Soc'y of N.Y. Hosp., 201 F.3d 50, 54 (2d Cir. 1999).
Nor does copyright protect "scenes a faire," which are "sequences of events that
necessarily result from the choice of a setting or situation." Williams, 84 F.3d at 587 (internal
quotation marks omitted); see also Walker, 784 F.2d at 50 (finding that "drunks, prostitutes,
vermin and derelict cars" were scenes a faire because they would appear in any realistic work
about police in the South Bronx).
"In order to establish a claim of copyright infringement, a plaintiff with a valid
copyright must demonstrate that: (1) the defendant has actually copied the plaintiffs work; and
(2) the copying is illegal because a substantial similarity exists between the defendant's work and
the protectible elements of plaintiffs." Gaito, 602 F.3d at 63 (internal quotation marks omitted).
Courts generally assume for the purposes of a motion to dismiss that the first element is satisfied
and focus instead on whether a substantial similarity exists between the works. See Gal v.
Viacom Int'I, Inc., 403 F. Supp. 2d 294,299 (S.D.N.Y. 2005); see also Gaito, 602 F.3d at 63.
Because "the question of substantial similarity typically presents an extremely
close question of fact, questions of non-infringement have traditionally been reserved for the trier
of fact." Gaito, 602 F.3d at 63 (internal citations omitted). But the Second Circuit has
"repeatedly recognized that, in certain circumstances, it is entirely appropriate for a district court
to resolve that question as a matter of law, either because the similarity between two works
concerns only non-copyrightable elements of the plaintiffs work, or because no reasonable jury,
properly instructed, could find that the two works are substantially similar." Gaito, 602 F.3d at
63 (internal quotation marks omitted). "When a court is called upon to consider whether the
works are substantially similar, no discovery or fact-finding is typically necessary, because what
is required is only a visual comparison of the works." Gaito, 602 F.3d at 64. When "the works
in question are attached to a plaintiff s complaint, it is entirely appropriate for the district court to
consider the similarity between those works in connection with a motion to dismiss because the
court has before it all that is necessary in order to make such an evaluation." Gaito, 602 F.3d at
63-64. "In copyright infringement actions, the works themselves supersede and control contrary
descriptions of them, including any contrary allegations, conclusions or descriptions of the works
contained in the pleadings." Gaito, 602 F.3d at 64 (internal quotation marks and citations
The Second Circuit's standard on substantial similarity offers district courts little
guidance because it blurs the distinction between questions of fact "traditionally reserved for the
trier of fact" and questions oflaw reserved for the district court. Gaito, 602 F.3d at 63-64; see
also 3 William F. Patry, Patry on Copyright § 9:86.50 (2008). It is hard to discern the difference
between the legal analysis a district judge undertakes at the motion to dismiss stage when the
works in question are attached, and the factual analysis the same judge undertakes during a
bench trial. See, e.g., Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1093
(2d Cir. 1974) (finding infringement as a matter of law and noting "we may in a real sense be
factfinding"). The uncertainty of this distinction has the potential to remove questions of fact
from a jury, authorize district judges to resolve such questions, and empower appellate judges to
review what are essentially factual determinations de novo. See, e.g., Soptra Fabrics, 490 F.2d at
1094 (reversing a district court's finding that there was no substantial similarity and observing
that "perhaps the error was really the result of a young district judge's failure to appreciate with
the wisdom and experienced eye that only middle age can bring to the subject of feminine wear
the substantial similarity we appellate judges discern"). Nevertheless, this Court is bound by the
Second Circuit's standard, and resolution of this case at the pleading stage is therefore
Substantial similarity involves many aspects of a work, including "the total
concept and theme, characters, plot, sequence, pace, and setting." Williams, 84 F.3d at 588.
"The standard test for substantial similarity between two items is whether an ordinary observer,
unless he set out to detect the disparities, would be disposed to overlook them, and regard [the]
aesthetic appeal as the same." Gaito, 602 FJd at 66 (internal quotation marks omitted). This
ordinary observer test asks "whether an average lay observer would recognize the alleged copy
as having been appropriated from the copyrighted work." Gaito, 602 FJd at 66 (internal
quotation marks omitted). When works "have both protectible and unprotectible elements," a
court applies a "more discerning" test and "must attempt to extract the unprotectible elements
from [its] consideration and ask whether the protectible elements, standing alone, are
substantially similar." Gaito, 602 FJd at 66 (internal quotation marks omitted); 3 William F.
Patry, Patry on Copyright § 9:137 (2008) ("Where the parties' works contain a significant
amount of public domain material, the court of appeals ... requires that ... public domain trees
be left out of the forest."). Under either approach, a court is "principally guided by comparing
the contested design's total concept and overall feel with that of the allegedly infringed work, as
instructed by our good eyes and common sense." Gaito, 602 F.3d at 66 (internal citations and
quotation marks omitted).
Hallford's amended complaint contains a single cause of action against
Defendants for infringing his Prodigy copyright. (Compl., 62-69.) Despite this, Hallford
argues that the Court should also consider Touch's similarity to another of his earlier works, a
novel titled Visionary. Specifically, Hallford argues that Touch is a "remolecularized version of
Prodigy and Visionary," and that when Touch is viewed against both works, his complaint states
a claim for copyright infringement. (Compl., 62-69.) But such a comparison fails for two
reasons. First, copyright infringement requires substantial similarity between a protected work
and an infringing work. To state a claim, Hallford cannot mix and match alleged similarities
between Touch and other works that are not related to one another. Second, Touch and Visionary
bear no similarities. Visionary involves a reporter named Jim Jacobsen who is sent to cover
Nigel Fox, a prophet-like figure. After Nigel is killed, Jim comes to learn that Nigel was his
father. Aside from a passing reference to characters in Prodigy-Nigel's mention of his
interview with Frank Glen-Visionary is entirely dissimilar to both Touch and Prodigy. (Zavin
Decl. Ex. B: Visionary ("Visionary"), at 462.) Accordingly, this Court turns to the similarities
between Prodigy and Touch.
According to Hallford, the similarities between Prodigy and Touch are legion.
These similarities include, among others, that both works are set in New York and that the names
of both of the main characters begin with the letter "J." (Compl. ~ 42,54.) This Court need not
address every alleged similarity because "the works themselves supersede and control[.]" Gaito,
602 F.3d at 64 (internal quotation marks and citations omitted). And lists of similarities "are
'inherently subjective and unreliable, particularly where 'the list emphasizes random similarities
scattered throughout the works.'" Williams, 84 F.3d at 590 (quoting Litchfield v. Spielberg, 736
F.2d 1352, 1356 (9th Cir. 1984». "Such a scattershot approach cannot support a finding of
substantial similarity because it fails to address the underlying issue: whether a lay observer
would consider the works as a whole substantially similar to one another." Williams, 84 F.3d at
Here, the average lay observer-no matter how discerning-would not recognize
that Touch was appropriated from Prodigy because this is not "one of those relatively unusual
cases" where the infringing work copies the "particular" or "same" selections made in the
copyrighted work, and the two works are different in total concept and overall feel. Tufenkian
Imp./Exp. Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127 (2d Cir. 2003); Gaito, 602 F.3d
First, the plot and sequence of Prodigy and Touch are substantially different.
Prodigy is essentially a mystery story wherein a reporter for a parapsychology journal bonds
with a young autistic child who helps him discover how a man prevented a train accident.
Touch, by contrast, is a fast-paced work that cuts among multiple plotlines across multiple
countries. In the first episode alone, Jake's ability prevents a suicide bombing, restores a
family's livelihood, saves children on a school bus, comforts grieving parents, and launches a
smgmg career. In Touch, Jake operates as "an air traffic controller for ... interconnectivity" to
ensure that particular people meet at particular moments in order to avoid catastrophe. (Touch
Pilot at 28:25-28:45.)
Second, the characters of Prodigy and Touch are not substantially similar. "In
determining whether characters are similar, a court looks at the totality of the characters'
attributes and traits as well as the extent to which the defendants' characters capture the total
concept and feel of figures in plaintiff's work." Sheldon Abend Revocable Trust v. Spielberg,
748 F. Supp. 2d 200, 208 (S.D.N.Y. 2010). "The bar for substantial similarity in a character is
set quite high." Allen v. Scholastic Inc., 739 F. Supp. 2d 642, 660 (S.D.N.Y. 2011) (internal
While both Jonathan and Jake have special powers and exhibit symptoms that
resemble autism, the boys are fundamentally different. Jonathan is autistic but is later cured of
his symptoms. (Prodigy at 122.) He speaks to characters by playing back a tape recording.
(Prodigy at 9.) Jonathan is "practical[ly] an orphan" and longs for someone to talk to him.
(Prodigy at 13.) He enjoys being touched. (Prodigy at 27.) Jake, by contrast, is never
diagnosed with autism, even though he exhibits similar symptoms. He refuses to speak to
anyone, even his father, and prefers to communicate by means of symbols and coded messages
that lead his father to make connections with other people. Unlike Jonathan, whose father
abandoned him, Jake has a loving father who will go to any length to keep him from being taken
away. But, despite this, Jake cannot bear to be touched by his father or anyone else. (Touch
Pilot at 16:10-16:26.)
Additionally, other characters in Prodigy and Touch are not substantially similar.
In Prodigy, the main character, Frank Glen, is a freelance investigative journalist who is working
on an assignment for a parapsychology journaL Frank is a childless widower who is very close
to his sister. In Touch, the main character, Martin Bohm, is a successful journalist who quit his
job in order to care for his son after his wife died. While Frank and Martin are both widowers,
that fact does not render them substantially similar. See DiTocco v. Riordan, 815 F. Supp. 2d
655,668 (S.D.N.Y. 2011). Frank is not Jonathan's father; he is merely his friend. Frank's
motivation is to solve a mystery. By contrast, Martin is Jake's father and his drive to decipher
his son's cryptic messages stems from a parental desire to communicate.
Third, the themes of both works concern interconnectedness. Each reveals
various characters coming together. In Prodigy, the characters solve a mystery together and
provide an emotional support system for a young boy. In Touch, a young boy brings together
various characters whose lives must touch to avert calamity. Touch's theme of connection also
extends to Martin and Jake. In helping his son bring lives together, Martin is able to
communicate with his son. At the broadest level, Prodigy and Touch are similar in theme.
But copyright does not protect such breadth. "[T]he essence of infringement lies
in taking not a general theme but its particular expression through similarities of treatment,
details, scenes, events and characterization." Effie Film, LLC v. Pomerance, --- F. Supp. 2d ----,
2012 WL 6584485, at *14 (S.D.N.Y. Dec. 18,2012) (citing Reyher v. Children's Television
Workshop, 533 F.2d 87, 90-91 (2d Cir. 1976)). The shared similarities must be more than just
generalized ideas or themes. Cabell v. Sony Pictures Entm't, Inc., 714 F. Supp. 2d 452,459
(S.D.N.Y. 2010) (citing Walker, 784 F.2d at 48). Interconnectedness is not a protectable theme.
And the themes in Prodigy and Touch are only similar in that they each address this non
Fourth, the setting and pace of Prodigy and Touch are different. Prodigy is a
relatively slow-paced drama set in New York and rural Pennsylvania. Touch, by contrast,
features multiple stories from all around the world. Its pace is frenetic. Both works feature
scenes in New York City. But the setting ofNew York City is not a protectible element of a
copyrighted work. Sinicola v. Warner Bros., Inc., 948 F. Supp. 1176, 1189 (E.D.N.Y. 1996);
Littel v. Twentieth Century Fox Film Corp., 89 Civ. 8526 (DLC), 1995 WL 404939, at *15
(S.D.N.Y. July 7, 1995).
Finally, the total concept and feel of the works are not similar. While Prodigy
and Touch are stories about human connection, they are fundamentally different. In Prodigy, an
investigative journalist who is haunted by the loss of his wife grows to care for an autistic child
who cannot communicate with the outside world. Together, they discover how a train accident
was narrowly averted. Through their time together, both of them are changed. Frank learns to
make new relationships. Jonathan learns to speak. Prodigy is about the family forged through
unlikely connections around Jonathan. But Touch is less about family and more about fate. In
Touch, Jake reveals the "red thread of fate" that binds together people whose lives are destined to
touch. (Touch Pilot at 0.23-1: 16). Jake is able to facilitate those connections among people, and
in doing so, he changes the world. Touch is about the mystery of Jake's power and Jake and
Martin's ongoing mission to ensure that particular people meet at particular moments in order to
Because Prodigy and Touch are not substantially similar, Hallford's complaint
fails to state a claim for copyright infringement. For this reason, the complaint also fails to state
a claim against non-moving party Defendant Tailwind Productions. Wachtler v. County of
Herkimer, 35 F.3d 77,82 (2d Cir. 1994); Hecht v. Commerce Clearing House, 897 F.2d 21, 26
n.6 (2d Cir. 1990).
For the foregoing reasons, Defendants Fox Entertainment Group Inc., Peter F.
Chemin, Chemin Entertainment LLC, Richard Timothy Kring, Tailwind Productions, and Kiefer
Sutherland's motion to dismiss Hallford's amended complaint is granted. The Clerk of the Court
is directed to terminate all pending motions, mark this case as closed, and enter judgment for
Dated: February 13,2013
New York, New York
WILLIAM H. PAULEY III
Joseph D. Nohavicka
Mavromihalis Pardalis & Nohavicka, LLP
Astoria, NY 10006
Counsel for Plaintiff
Loeb & Loeb LLP
345 Park Avenue
New York, NY 10154
Counsel for Defendants