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April 10, 1997


The opinion of the court was delivered by: KOELTL

 JOHN G. KOELTL, District Judge:

 This is an action by the plaintiff, Lone Wolf McQuade Associates ("McQuade Associates"), arising out of rights held by the plaintiff relating to the 1983 motion picture "Lone Wolf McQuade." The central issue in this case is whether the popular television series "Walker, Texas Ranger" violates the plaintiff's rights in the movie "Lone Wolf McQuade."

 On or about February 14, 1995, the plaintiff brought suit against defendant CBS, Inc. ("CBS") alleging that "Walker, Texas Ranger" violates its rights relating to "Lone Wolf McQuade" pursuant to the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and New York unfair competition and misappropriation law. In June, 1995, Orion Pictures Corporation ("Orion") intervened as a party plaintiff. Orion alleged, among other things, that CBS, Top Kick Productions, Inc. ("Top Kick"), and Chuck Norris (collectively, the "defendants") infringed its copyright rights in "Lone Wolf McQuade." *fn1" On or about May 24, 1996, McQuade Associates filed a Second Amended Complaint in which it asserted the same claims against Top Kick and Chuck Norris as it had previously asserted against CBS.

 In a settlement agreement dated December 9, 1996, Orion granted CBS a retroactive license from January 1, 1990, in perpetuity to use "Lone Wolf McQuade" in connection with the television series, "Walker, Texas Ranger." On December 17, 1996, the Court so ordered a stipulation dismissing with prejudice all claims by Orion against the defendants. *fn2" Only plaintiff McQuade Associates is now pursuing its claims against the defendants.

 The defendants *fn3" now move for summary judgment pursuant to Fed. R. Civ. P. 56 dismissing the majority of plaintiff McQuade Associates' claims *fn4" on several grounds. First, the defendants move to dismiss the copyright claims on the grounds that "Lone Wolf McQuade" and "Walker, Texas Ranger" are not substantially similar in their protectable expression. Second, the defendants assert that the copyright claims should be dismissed because Orion granted CBS a retroactive license to use "Lone Wolf McQuade" in connection with the television series "Walker, Texas Ranger." Third, the defendants argue that the plaintiff's misappropriation and unfair competition claims should be dismissed because they are preempted by the Copyright Act of 1976 and because they are precluded by CBS's retroactive license. The plaintiff also cross-moves for summary judgment on the copyright claim.


 The standard for granting summary judgment is well established. Summary judgment may not be granted unless "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett, 477 U.S. 317, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986); Gallo v. Prudential Residential Servs. Ltd. Partnership, 22 F.3d 1219, 1223 (2d Cir. 1994). "The trial court's task at the summary judgment motion stage of the litigation is carefully limited to discerning whether there are genuine issues of material fact to be tried, not to deciding them. Its duty, in short, is confined at this point to issue-finding; it does not extend to issue-resolution." Id., 22 F.3d at 1224.

 The moving party bears the initial burden of "informing the district court of the basis for its motion" and identifying the matter that "it believes demonstrates[s] the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323. The substantive law governing the case will identify those facts which are material and "only disputes over facts that might affect the outcome of the suit under the governing law will properly preclude the entry of summary judgment." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). In determining whether summary judgment is appropriate, a court must resolve all ambiguities and draw all reasonable inferences against the moving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986) (citing United States v. Diebold, Inc., 369 U.S. 654, 655, 8 L. Ed. 2d 176, 82 S. Ct. 993 (1962)); see also Gallo, 22 F.3d at 1223.

 If the moving party meets its burden, the burden shifts to the nonmoving party to come forward with "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). With respect to the issues on which summary judgment is sought, if there is any evidence in the record from any source from which a reasonable inference could be drawn in favor of the nonmoving party, summary judgment is improper. See Chambers v. TRM Copy Ctrs. Corp., 43 F.3d 29, 37 (2d Cir. 1994).


 There is no genuine dispute with respect to the following material facts. Pursuant to an agreement dated May 11, 1982 (the "1818 Agreement"), 1818 Productions, Inc. ("1818 Productions") transferred, sold, and assigned to Orion certain rights and interests with respect the motion picture "Lone Wolf McQuade." Produced and released in 1983, "Lone Wolf McQuade" is an action-packed movie starring Chuck Norris as J.J. McQuade, a Texas Ranger who uses martial arts. The main plot of "Lone Wolf McQuade" involves a group of evil drug dealers who hijack an army convoy in order to obtain a huge supply of ammunition and high-power weapons. J.J. McQuade ultimately chases the villains to Mexico where they are holding his daughter hostage and defeats them in a final battle with a combination of bullets, grenades, and martial arts.

 In an agreement dated March 22, 1983 (the "Purchase Agreement"), Orion conveyed to McQuade Associates "all right, title and interest in and to all copyrights in the Film" but expressly did not convey and reserved various rights including "any interest whatsoever in and to ... any television series rights, so-called television 'special' rights, remake or sequel rights, or any other ancillary rights and/or allied rights ...." (Purchase Agreement at 1-2.) In the early 1990s, Orion discussed with CBS the possibility of a movie-of-the-week and television series based on "Lone Wolf McQuade," but an agreement never was reached regarding the proposal. (Orion Compl. P 15; Answer to Orion Compl. P 15.)


 The defendants first argue that summary judgment on the plaintiff's copyright claims is appropriate in this case because "Lone Wolf McQuade" and "Walker, Texas Ranger" are not substantially similar in their protectable expression. To succeed on a copyright infringement claim, a plaintiff with a valid copyright must prove that: (1) the plaintiff's work was actually copied by the defendant; and (2) the copying is illegal because there is a substantial similarity between the protectable material in the plaintiff's work and the defendant's work. See, e.g., Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122-23 (2d Cir. 1994). For the purpose of their motion, the defendants concede actual copying and do not dispute the validity of the copyright for "Lone Wolf McQuade."

 In most cases, the test for substantial similarity is the ordinary observer test, which requires a determination whether the average lay observer would find that the defendant appropriated the alleged copy from the copyrighted work. See Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765-66 (2d Cir. 1991). However, when a work contains both protectable and unprotectable elements, a court should apply the more discerning ordinary observer test by attempting to eliminate the unprotectable elements from consideration and comparing only the protectable elements for substantial similarity. See Knitwaves, 71 F.3d at 1002; Folio Impressions, 937 F.2d at 765-66; Laureyssens v. Idea Group, Inc., 964 F.2d 131, 141 (2d Cir. 1992). As explained by the Court of Appeals for the Second Circuit:

The plaintiff must show that the defendant appropriated the plaintiff's particular means of expressing an idea, not merely that he expressed the same idea. The means of expression are the 'artistic' aspects of a work; the 'mechanical' or 'utilitarian' features are not protectible.... We focus on whether an ordinary lay observer would overlook the dissimilarities between the artistic (protectible) aspects of the two works and would conclude that one was copied from the other. Where, as here, we compare products that have both protectible and unprotectible elements, we must exclude comparison of the unprotectible elements from our application of the ordinary observer test.

 Fisher-Price, 25 F.3d at 123 (citations omitted).

 But the more discerning ordinary observer test still takes into account the work's "'total concept and feel.'" Knitwaves, 71 F.3d at 1003 (quoting Eden Toys, Inc. v. Marshall Field & Co., 675 F.2d 498, 500 (2d Cir. 1982)). The more discerning ordinary observer test does not stand for the broad proposition

that, in comparing designs for copyright infringement, we are required to dissect [the two works] into their separate components, and compare only those elements which are in themselves copyrightable.... If we took this argument to its logical conclusion, we might have to decide that "there can be no originality in a painting because all colors of paint have been used somewhere in the past."

 Knitwaves, 71 F.3d at 1003 (quoting transcript of district court proceedings of Sept. 1, 1992, at 4); see also M. H. Segan Ltd. Partnership v. Hasbro, Inc., 924 F. Supp. 512, 521 (S.D.N.Y. 1996) ("Through Knitwaves, the Second Circuit has recently reconfirmed that the more discerning ordinary observer test is not an invitation to dissect a work into its constituent elements or features. The works as a whole must be compared to each other."). The author's original contributions are protectable including "the original way in which the author has 'selected, coordinated, and arranged' the elements of his or her ...

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