Rodriguez v. Heidi Klum, LLC
By Donna M. Bates
United States District Court Judge Loretta A. Preska granted summary judgment dismissing a complaint alleging that the reality show Project Runway infringed upon a treatment created by plaintiff, holding that the plaintiff failed to demonstrate that the defendants had access to any copyrighted material and the existence of substantial similarity between the two programs. Further, Judge Preska held that to the extent that similarities existed, they related solely to non-copyrighted features. Rodriguez v. Heidi Klum, LLC, 2008 WL 4449416 (S.D.N.Y. Sept. 30, 2008).
This case deals with a copyright infringement claim against the popular reality television show Project Runway, produced in part and hosted by supermodel Heidi Klum ("Klum"). Project Runway pits aspiring fashion designers against each other before a panel of judges in weekly elimination challenges, with the grand prize winner receiving $100,000, an opportunity to mentor with Banana Republic, and a design spread in ELLE Magazine. The show is produced by Miramax Film Corporation ("Miramax") (a subsidiary of The Walt Disney Company) and The Weinstein Company, LLC ("Weinstein"), and is distributed by NBC Universal, Inc. ("NBC") through its subsidiary, Bravo Media LLC ("Bravo"). Harvey Weinstein and Eli Holzman were employees of Miramax during the relevant time period and are executive producers of Project Runway. 7th on Sixth is an event management company that organizes and runs fashion shows. 7th on Sixth is a subsidiary of IMG World, an entertainment talent management company. TWI is a subsidiary of IMG. Desiree Gruber works for Full Picture LLC, a public relations firm, and is also Klum's publicist and executive producer of Project Runway. All the key players are collectively referred to as "the Defendants."
Plaintiff Cynthia Rodriguez ("Rodriguez") is a designer with over twenty years of industry experience. Plaintiff Elizabeth Zwiebach ("Zwiebach") has over twenty years experience as a fashion buyer and merchandiser. The Plaintiffs allege that in 2002, they began developing and writing a detailed Treatment for a reality television show titled "American Runway." It was registered with the Writer's Guild of America, East, on or about March 3, 2003, and with the U.S. Copyright Office on June 6, 2003. Plaintiffs began shopping the Treatment around to talent agencies on or about May 16, 2003, and forwarded copies of it to certain employees at 7th on Sixth. It was then circulated to certain employees at TWI. While some interest was expressed, by late July 2003, progress on "American Runway" was at a standstill.
In December 2004, Rodriguez saw the premier of Project Runway, and concluded that the Defendants impermissibly used material from the Treatment. The Plaintiffs filed the instant action in December 2005 in Federal court, claiming federal copyright infringement and New York common law claims for misappropriation, unfair competition and unjust enrichment. The Defendants moved for summary judgment to dismiss the complaint. The Court granted summary judgment on both the federal and state law claims.
In its decision, the Court set forth the standard for copyright infringement claims and applied the facts of the instant case. To prove copyright infringement, a plaintiff must demonstrate (1) a valid copyright, and (2) infringement of the copyright by the defendant. In this case, the existence of a valid copyright was not contested, so the Court focused on whether there was actual infringement of the copyright. Actual infringement can be shown where (1) the plaintiffs demonstrate actual copying of the plaintiffs' work and (2) the copying was illegal. Since proof of actual copying is rare, it may be inferred where a plaintiff establishes that the defendant (1) had access to the copyrighted work and (2) there are similarities between the two works that indicate the work was copied. Access cannot be based on mere "speculation or conjecture," but must be shown by some affirmative and probative evidence of access.
In this case, the Plaintiffs tried to show access through discussions between persons associated with IMG (recipients of the Treatment) and Klum's publicist and Miramax. The Court held such a showing was insufficient. The Court noted that the discussions cited by the Plaintiffs were focused on the marketing of Project Runway, and not on the substance of the show. Klum, Holzman and Gruber also testified that they never heard of "American Runway" until after the action was filed. The hypothetical possibility that the Defendants could have received the Treatment from IMG was not enough.
But even if they could show access, the Plaintiffs' copyright infringement claim would still fail because they could not show a substantial similarity between the Treatment and Project Runway. The Court noted that copyright protection does not apply to unoriginal works or those taken from the public domain. This case involved a reality show where people competed for a prize. The Court determined it was not "wholly original" because such an idea is a basic staple of modern television programming, and in this case, the Plaintiffs admitted "American Runway" was inspired by other reality television shows such as American Idol and Project Greenlight. In such cases, courts apply the "More Discerning Observer" test, as set out in Boisson v. Banian, Ltd., 273 F.3d 262 (2d Cir. 2001), which applied the test to infringement claims involving literary works. According to Boisson, to determine similarity a court may look at aspects such as the total concept and feel, theme, characters, plot, sequence, pace, and setting.
Applying this test to the current case, the Court held that no reasonable jury could find that the Treatment and Project Runway were substantially similar. The Treatment envisioned a show where aspiring fashion designers compete to create the best moderately priced clothing line for a "Real American Man or Woman." As the show progresses, contestants present additional completed outfits of their own clothing line. Competitors are eliminated on a weekly basis by a panel of judges, whose vote counts for 50% on which designers should stay, and the public, who also receives a 50% vote. Episodes take place in front of a live studio audience with a celebrity host.
Project Runway, in contrast, focuses on the search for the next great high-class fashion designer, and not the creation of a marketable clothing line. Contestants compete in unrelated elimination challenges each week. Whether or not their clothing is marketable to consumers is not a factor. The public has no say in elimination decisions, and except for the season finale, there is no live audience or celebrity host. Any similarities between the two constitute scenes a faire, which involve sequences of events or features that necessarily result from the choice of a setting or situation. Scenes a faire are not entitled to copyright protection. The similarities in this case, such as a panel of judges, a design work-room with sewing machines, a specific number of contestants, professional models, hairstylists, make-up artists, weekly episodes, and the New York location, all necessarily flow from the uncopyrightable idea of a reality fashion show.
Also weighing heavily in the Court's finding of no actual copying was the Defendants' uncontroverted evidence that Project Runway was created independently of any alleged exposure to the Treatment. The Defendants presented evidence of brainstorming meetings and outlines dated before they could ever have viewed the Treatment. For example, an outline produced by the Defendants, describing a fashion design reality television program, was authored approximately one month before the Treatment was ever given to 7th on Sixth or TWI. While the Court acknowledged that such evidence, standing alone, was not enough to warrant summary judgment, such evidence of independent creation, combined with the Plaintiffs' inadequate showing of either access or similarity, was sufficient to dismiss the copyright claims.
The Court then addressed the state law claims of misappropriation, unfair competition and unjust enrichment. The Court pointed out that generally, state law claims should not be preempted by the Copyright Act where they include extra elements rendering the state claim qualitatively different from the copyright claim. In New York however, the Court of Appeals has explicitly ruled that New York claims of misappropriation, unfair competition and unjust enrichment are fundamentally similar to the copyright infringement claims, and are therefore preempted by the Copyright Act. Because Plaintiffs' claims in this case were grounded in the same fundamental allegations, the state claims also had to be dismissed.
