United States District Court, Western District of New York
March 25, 1999
STEPHEN J. ARPAIA, PLAINTIFF,
ANHEUSER-BUSCH COMPANIES, INC., D'ARCY MASIUS BENTON & BOWLES, INC., DDB NEEDHAM CHICAGO, INC., DEFENDANTS.
The opinion of the court was delivered by: Siragusa, District Judge.
DECISION AND ORDER
This is an action for copyright infringement, in which the
plaintiff alleges that the defendants infringed scripts he wrote
for Budweiser Beer television advertisements involving a
character called the "Bud Frog." Now before the Court is the
defendants' motion [# 16] for summary judgment. For the reasons
that follow, this motion is granted.
In 1990, the plaintiff wrote seven scripts intended as
television advertisements for Budweiser Beer. Each of these
advertisements contain a character referred to as "the Bud Frog."
In one of these scripts, the Bud Frog makes a "BUD BUD" sound:
We hear a FROG going "RRIBBET RRIBBETT . . ." The
woman looks over to where the sound is coming from.
Sitting there is a frog. . . . The girl bends over to
kiss the frog. As soon as she is about to kiss the
frog, another frog, THE BUD FROG, jumps into the
scene. THE BUD FROG is wearing a tuxedo shirt and a
black tuxedo coat. He is wearing neon green mirrored
sunglasses. THE BUD FROG is making a "BUD BUD" sound.
In the other six scripts, the Bud Frog is silent. In six of the
scripts, the Bud Frog is wearing neon green mirrored sunglasses.
In addition to the aforementioned tuxedo shirt and coat, the Bud
Frog appears in some of the scripts wearing a captain's hat, a
pink bathing suit, a hot pink tank top with neon green boxer
shorts, a pharaoh's costume and a yellow construction hard hat.
The seven scripts are summarized, in relevant part, below:
1) The Bud Frog makes the "BUD BUD" sound. A human
female actress then kisses the Bud Frog, who turns
into a can of Budweiser beer. The woman then exits
with the can of beer, while the Bud Frog is "standing
upright leaning on a tree with his legs crossed. He
has a big smile on his face. He nods his head in
2) Two men who are stranded on a deserted island send
a message in bottle, asking for help. In response to
this message, the Bud Frog arrives on the deserted
island on an inner tube filled with cans and bottles
of Budweiser beer. "The BUD FROG is sitting at the
head of the inner tube. He is wearing a captain's hat
along with his neon green mirrored sunglasses."
3) An astronaut is floating in space, attached to his
spaceship by a safety cord, when a can of Budweiser
beer floats by. Unable to reach the can of beer, the
astronaut disconnects his safety cord
and grabs the beer, then floats away from his
spaceship. "The BUD FROG is seen laying on a towel on
the moon. He is wearing a pink bathing suit and his
neon green mirrored sunglasses."
4) A man and a woman are sitting together outdoors on
a blanket at night, watching the sky. The woman
suggests that the man make a wish on a shooting star,
which he does. In response to the man's wish, the
woman then magically turns into a six-pack of
Budweiser beer. "The BUD FROG is riding the shooting
star like it is a horse. He is wearing a hot pink
tank top with neon green boxer shorts. He looks down
towards the beach, smiles and nods his head in
5) Two men who are lost are wandering through the
desert, with only a single can of Budweiser beer. The
two agree to share the beer, but one of the men
wishes that they had "just one more" can of beer. The
men then magically find themselves "sitting on
thrones in the middle of a beautiful oasis," when a
beautiful woman approaches the two and serves them
each a can of Budweiser. "Sitting down leaning at the
foot of the throne is the BUD FROG. He is dressed in
a pharaoh's costume. He is wearing his neon green
mirrored sunglasses. He has a big smile on his face."
6) An architect's blueprint of a house comes to life.
After the architect draws an attractive woman into
the blueprint, she offers him a bottle of Budweiser
beer. The architect then draws himself into the
blueprint. "A gust of wind blows the blueprint out
the window. CAMERA PANS LEFT. We see the BUD FROG
standing behind a large fan. He is wearing a yellow
construction hard hat. He is wearing his neon green
7) A man who is attending a meeting becomes bored and
begins paging through a magazine, when he sees a
picture of three women sunning themselves beside a
swimming pool. The women in the picture then beckon
to the man, and offer him a can of Budweiser. The man
is then magically transported into the scene in the
photograph. "CAMERA CLOSES IN on the cover [of the
magazine]. On the cover of the magazine is the BUD
FROG. He has on his neon green mirrored sunglasses.
He has a big smile on his face."
The plaintiff submitted these scripts, unsolicited, to
Anheuser-Busch ("A-B") in or about June of 1990.
At that time, A-B had a policy with respect to such unsolicited
submissions. The submissions were to be forwarded to A-B's legal
department, which would then return the submissions to their
senders, along with a non-confidentiality agreement, which the
senders were directed to sign and then return to A-B along with
their submissions. At the same time, A-B's legal department would
identify the particular A-B Brand Manager to whom the sender was
to resubmit his or her submission. In order to identify such a
particular Brand Manager, the legal department staff member would
have to review the submission to determine its subject matter.
Once the sender completed the non-confidentiality agreement and
sent it and the submission back to the particular Brand Manager
at A-B, the Brand Manager would respond to the sender with a
letter. It was A-B's policy that once the particular Brand
Manager responded to the sender, he was to send the submission,
the non-confidentiality agreement, and a copy of his letter to
A-B's legal department. Once these materials were returned to
A-B's legal department, it was A-B's policy that only the legal
department staff were to have access to them. Under this policy,
advertising agencies working for A-B would have no direct access
to unsolicited submissions. However, these agencies did work on
various advertising projects with A-B employees who had access to
such submissions before they were sent on to A-B's legal
When the plaintiff sent his scripts to A-B in June of 1990, he
addressed the package containing his scripts to Mr. Robert
Lachky, who was then the Senior Brand Manager for Bud Light. The
plaintiff was then sent a non-confidentiality agreement, which he
executed and returned to A-B. The non-confidentiality agreement
provided, in pertinent part, that the plaintiff released
"Anheuser-Busch from any and all liability as may arise by reason
of its use of all or any portion [of the plaintiff's submission]
except such liability as may arise by reason of valid patents now
or hereafter issued or valid trademark or copyright registrations
which [the plaintiff] now or hereafter may own." By letter dated
July 12, 1990, Lachky wrote to the plaintiff and informed him
that A-B had chosen not to pursue his idea "for a Bud Light
commercial."*fn1 Lachky testified at his deposition that he
never reviewed the unsolicited submissions that were sent to his
office. Further, he stated that he had no recollection of ever
having seen the plaintiff's scripts prior to the commencement of
In 1994, A-B was represented by the defendant advertising
agency, D'arcy Masius Benton & Bowles, Inc. ("D'arcy"). During
the summer of 1994, August Busch IV, A-B's Vice President of
Brand Management, told members of the D'arcy firm that he wanted
them to create a television commercial for A-B that was similar
to a commercial that he had seen for Diet Pepsi, in which an
elephant swims up to a woman floating on a raft, takes her Diet
Pepsi, and leaves a few peanuts on the raft. In order to create
an advertisement that would be satisfactory to A-B, Smith's
creative team at D'arcy was instructed to "free think" and to
create the one television advertising spot that the team had
"always wanted to do." At that time, Michael Smith was an Art
Director on the A-B account at D'arcy's St. Louis office. Smith
presented the idea of using a frog croaking "Bud" to his partner,
who expanded on Smith's idea by adding two other frogs who
croaked "weis" and "er," respectively.*fn2 According to Smith,
he first thought of the idea for using a frog croaking "Bud" in a
Budweiser beer commercial, in 1969 or 1970. As a child in rural
Illinois, Smith noticed that the frogs around his home often
sounded as if they were saying "Bud." The "Bud" sound was so
distinct in one particular frog that Smith named the frog "Bud."
Smith claims that he never saw the plaintiff's scripts prior to
developing his idea for the Bud Frog, and that no one at A-B ever
discussed with him the concept of using a frog in a Budweiser
D'arcy presented this idea to A-B in the summer of 1994 and
received a favorable response. A-B then had D'arcy produce the
initial "Bud Frog" commercial. A-B then ended its business
relationship with D'arcy in November of 1994, and hired other
advertising agencies, including the defendant DDB Needham
Chicago, Inc. ("DDB"), to create subsequent Bud Frog commercials.
The first Budweiser Frogs commercial aired on national television
in January of 1995.
The twenty-two Budweiser Frog television commercials that A-B
actually aired are summarized as follows:
a) The commercial opens with a large bull frog
sitting on a rock in a swamp, croaking "Bud." The
camera then shifts to two smaller frogs, one croaking
"weis" and the other croaking "er." The frogs
continue to make these sounds randomly, until
eventually they each
croak in sequence to for the word "Budweiser." The
camera pans up, revealing a neon Budweiser sign above
b) The three frogs from the first commercial are
sitting by the side of a road. As a large Budweiser
delivery truck approaches, one of the frogs croaks
"Bud," licks his lips, shoots out his tongue, and
attaches himself to the rear of the truck, which
continues to speed down the road, dragging the frog
through the air behind it.
c) A bullfrog sits in the swamp, croaking the
now-familiar "Bud" sound, when he hears a female
voice croaking "weis" in the distance. The bullfrog
then hops several times through the swamp toward the
"weis" sound, until he discovers the frog who is
croaking "weis" is an attractive female frog who
winks at him. The bullfrog chuckles and grins at the
d) As snow falls on a swamp and the bar, the viewer
hears the muffled sounds of "Bud," "weis" and "er."
The three shivering frogs are then shown on the deck
of the bar, with their tongues frozen to a can of
e) The three frogs ride an alligator out of the swamp
and into the bar. The sounds of a scream and breaking
glass are heard, then the frogs croak "Bud," "weis"
and "er." To the sounds of reggae music, the frogs
then ride out of the bar on the alligator's back with
a case of Budweiser tied onto the alligator.
f) The three frogs sit in the water, looking at a red
Budweiser speed boat that is tied to a dock. The
first two frogs croak "Bud" and "weis," and as the
third frog croaks "er" he leaps into the boat,
striking the boat's ignition button. As the first two
frogs look on, the boat then takes off and speeds
across the water with "er" frog screaming in
g) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, two lizards,
Frankie and Louie, discuss the fact that they had
also auditioned for the now-famous Budweiser Frogs
commercials. The smaller frog, Louie, complains about
losing out to the frogs, and states "those frogs are
h) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie tells
Frankie that he would like to swim over and attack
i) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie yells
insults at them, accidentally insulting Frankie's
mother in the process.
j) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie asks Frankie
if it's true that frogs really taste like chicken.
Noting that it is barbecue season, Louie then
continues to suggest ways that he could cook the
k) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie yells to the
frogs that their days are numbered, and that he warns
them that he knows a lot of predators, including the
snakes and "some very large ferrets."
l) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Frankie tells
Louie that he is hearing rumors that Louie is going
to "bump off the frogs."
m) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie yells to the
frogs that he hopes they enjoy the big [upcoming
Superbowl] game, especially the first half, since
they "may not be around" for the second half.
n) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie tells
Frankie that he plans to "assassinate" the frogs,
then tries to cover up his slip by saying that he
actually said he intends to "congratulate" them.
o) While the three frogs continue to croak "Bud,"
"weis" and "er" in the
background, Louie signals to a ferret with a ratchet
wrench who is hiding behind the electric Budweiser
sign above the bar. The sign then falls into the
swamp, sending an electric shock through the water
and silencing the frogs. Louie then tells Frankie
that, "eventually, every frog has to croak."
p) As Frankie and Louie survey the now smoldering
swamp, Louie says that it is the best day of his
life, until he again hears the frogs croaking the
familiar "Bud," "weis" and "er." Louie bitterly
concludes that one should "never hire a ferret to do
a weasel's job."
q) Alone with the ferret, Louie berates him for not
sticking to their "original plan."
r) Louie provides a public service announcement,
stating that he does not endorse assassination
attempts on frogs.
s) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Louie tells
Frankie that he is considering moving to another
swamp, because he does not feel comfortable living in
a swamp where assassination attempts are taking
t) While the three frogs continue to croak "Bud,"
"weis" and "er" in the background, Frankie tells
Louie that he wants him to move to another tree
branch, because he tried to "rub out the frogs."
u) Louie tells Frankie that Budweiser has chosen him
to replace the "weis" frog, who is suffering from
"post electro shock muscular irregularity."
v) As the two remaining frogs croak "Bud" and "er,"
Louie offers various interpretations of "weis,"
thereby earning a less than favorable review from
The plaintiff registered his scripts with the United States
Copyright Office on March 12, 1997. On January 7, 1998, the
plaintiff commenced this action against A-B, D'arcy, and DDB. The
complaint alleges causes of action for: 1) copyright
infringement; 2) breach of implied contract; 3) promissory
estoppel; 4) unjust enrichment; and 5) misappropriation. He seeks
damages, profits, permanent injunction and exemplary attorneys'
Following discovery, the defendants moved for summary judgment
on December 4, 1998. The defendants contend that they are
entitled to summary judgment on several grounds. First, they
contend that as a matter of law, their commercials are not
substantially similar to the plaintiff's scripts. Second, they
contend that the plaintiff cannot establish that the defendants
actually copied his scripts. Third, they contend that the
plaintiff's state-law claims are preempted. Fourth, they contend
that even if they are not preempted, the plaintiff's state-law
claims are barred by the non-confidentiality agreement between
the plaintiff and A-B. Finally, they contend that in the
alternative, the plaintiff's state-law claims fail on their
The plaintiff, however, contends that there are material issues
of fact which preclude summary judgment. First, on the issue of
whether or not the defendants actually copied the plaintiff's
scripts, the plaintiff contends that there is an issue of fact as
to whether or not Robert Lachky ever reviewed unsolicited
submissions generally, and whether or not he ever reviewed the
plaintiff's submission in particular. At his deposition, Lachky
testified that he never reviewed unsolicited submissions. (Lachky
Dep., pp. 55-59). However, the plaintiff has produced copies of
letters from Lachky to other persons who made unsolicited
submissions, in which Lachky discusses the particular details of
the submissions. For instance, in one letter, Lachky writes
"[t]hanks for sending along the tap[e] of your Lab Retriever
fetching Bud Lights! We appreciate his intelligence and good
taste. Unfortunately we don't think this concept can be pursued
as a television commercial for Bud Light, so we have to
respectfully decline your offer." In another letter, Lachky
writes "[t]hank you for submitting your music
and lyrics for a Budweiser commercial. We enjoyed listening to
the tape and appreciate your kind words regarding Anheuser-Busch.
I appreciate the time and effort you have devoted to your
proposal, however, I regret to inform you that we have chosen not
to pursue your idea." In another letter, Lachky writes "[t]hank
you for writing us regarding your `Male Bonding' idea for a
Budweiser commercial. We appreciate hearing recommendations from
our consumers. Unfortunately, Ms. Hilton, we have decided not to
use your idea for our advertising campaign." In further support
of his contention that Lachky reviewed his submissions, the
plaintiff notes that Lachky's July 12, 1990 letter refers to an
earlier submission by the plaintiff. Moreover, the plaintiff
notes that Lachky's letter deviates from the form rejection
letter produced by A-B in discovery. Finally, an employee of
A-B's legal department, Kathy Ngo, testified at her deposition
that once the Brand Managers received the resubmitted ideas and
the executed non-confidentiality agreements, they were supposed
to review the submissions before responding to the sender. (Ngo
Dep., p. 17, 23).
The plaintiff also contends that there is an issue of fact as
to whether or not Lachky personally kept a copy of the
plaintiff's scripts after he sent the plaintiff his rejection
letter dated July 12, 1990. As proof that Lachky may have kept a
copy for himself, the plaintiff points out that while A-B claimed
that it did not keep extra copies of such documents, in discovery
A-B produced two different non-confidentiality agreements signed
by the plaintiff and dated July 6, 1990, and two copies of
Lachky's rejection letter to the plaintiff.*fn3
The plaintiff also contends that there are issues of fact
regarding the origin of Smiths's idea for the Budweiser Frogs
commercial. At his deposition, Smith testified that when he was
growing up, it sounded to him as if the frogs near his home were
saying "Bud." Smith even testified that he had a pet frog named
"Bud." However, Lachky testified that he had asked Smith "more
than once" how he had come up with the idea, and Smith had told
him that it sounded as if the frogs near his home were saying
"Bud," "weis," and "er."(Lachky Dep. p. 36-37). Lachky also
testified that Smith never mentioned having a pet frog. Moreover,
Lachky testified that he had never met Smith before the
presentation of the Bud frog idea in the Summer of 1994, while
Smith testified that he had met with Lachky several times prior
to that presentation. (Lachky Dep. p. 39; Smith Dep. p. 48).
Finally, the plaintiff contends that in 1994, A-B's relationship
with D'arcy was "crumbling" due to D'arcy's poor creative output,
and that the resultant pressure on D'arcy to produce a successful
commercial creates a triable issue of fact as to whether or not
D'arcy then infringed the plaintiff's work.
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 there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." Fed. R.Civ.P.
56(c). A party seeking summary judgment bears the burden of
that no genuine issue of material fact exists. See, Adickes v.
S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d
142 (1970). "[T]he movant must make a prima facie showing that
the standard for obtaining summary judgment has been satisfied."
11 Moore's Federal Practice, § 56.11[a] (Matthew Bender 3d
ed.). In moving for summary judgment against a party who will
bear the ultimate burden of proof at trial, the movant may
satisfy this burden by pointing to an absence of evidence to
support an essential element of the nonmoving party's claim.
See, Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct.
2548, 91 L.Ed.2d 265 (1986). Once that burden has been
established, the burden then shifts to the non-moving party to
demonstrate "specific facts showing that there is a genuine issue
for trial." Fed. R.Civ.P. 56(e); Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
To carry this burden, the non-moving party must present evidence
sufficient to support a jury verdict in its favor. Anderson,
477 U.S. at 249, 106 S.Ct. 2505. Summary judgment is appropriate
only where, "after drawing all reasonable inferences in favor of
the party against whom summary judgment is sought, no reasonable
trier of fact could find in favor of the non-moving party." Leon
v. Murphy, 988 F.2d 303, 308 (2d Cir. 1993).
I. PLAINTIFF'S CLAIM OF COPY RIGHT INFRINGEMENT
The law in this Circuit pertaining to copyright infringement is
The Copyright Act of 1976 ("Copyright Act"),
17 U.S.C. § 101-803, grants copyright owners a bundle
of exclusive rights, including the rights to
"reproduce the copyrighted work in copies" and "to
prepare derivative works based upon the copyrighted
work." Id. § 106. "Copyright infringement is
established when the owner of a valid copyright
demonstrates unauthorized copying." Repp v. Webber,
132 F.3d 882, 889 (2d Cir. 1997); see Feist
Publications, Inc. v. Rural Tel. Serv. Co.,
499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991).
Castle Rock Entertainment, Inc. v. Carol Publ'g Group,
150 F.3d 132, 137 (2d Cir. 1998). Thus, to establish a prima facie claim
of copyright infringement, a plaintiff must establish two main
elements: "(1) ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original." Feist
Publications, Inc., 499 U.S. at 361, 111 S.Ct. 1282. On this
motion for summary judgment, the defendants do not deny that the
plaintiff owns a valid copyright. Accordingly, the determination
of this motion will turn upon the question of whether or not the
defendants copied original elements of the plaintiff's scripts.
In order to establish that the defendants copied his work, a
plaintiff must again establish two elements. First, the plaintiff
must show that the defendants actually copied his work. Second,
the plaintiff must show that the defendants' work "bears
substantial similarity to protected expression" in the
plaintiff's work. See, Castle Rock Entertainment, Inc., 150
F.3d at 137.
A. ACTUAL COPYING
The test for determining whether or not actual copying took
place was stated by the Second Circuit in Castle Rock
Actual copying may be established either by direct
evidence of copying or by indirect evidence,
including access to the copyrighted work,
similarities that are probative of copying between
the works, and expert testimony. . . . "[P]robative,"
rather than "substantial" similarity is the correct
term in referring to the plaintiff's initial burden
of proving actual copying by indirect evidence.
Castle Rock Entertainment, Inc., 150 F.3d at 137(citations and
internal quotation marks omitted). Access may be found where the
defendant had a "reasonable opportunity" to see the copyrighted
prior to creating the allegedly infringing work. Gaste v.
Kaiserman, 863 F.2d 1061
, 1067 (2d Cir. 1988). "`Probative
similarity,' — the standard for determining copying as a factual
matter — is a less-demanding standard than `substantial
similarity' — the standard for determining whether copying is
actionable as a legal matter." O.P. Solutions, Inc. v.
Intellectual Property Network, Ltd., No. 96 Civ. 7952(LAP), 1999
WL 47191, at *3 (S.D.N.Y. Feb.2, 1999). Probative similarities
are those that "in the normal course of events, would not be
expected to arise independently in the two works." Id. (citing
MELVILLE B. NIMMER ET AL., NIMMER ON COPYRIGHT, § 13.03[B], at
13-11 to 13-13).
Here, the Court finds that indirect evidence in the record
creates a triable issue of fact as to whether or not the
defendants actually copied the plaintiff's scripts. First, there
is evidence that the defendants had access to the plaintiff's
scripts prior to the creation of their commercials. It is
undisputed that the plaintiff sent his scripts to A-B in 1990,
and that A-B kept the scripts. Lachky claims that he never
reviewed unsolicited submissions, but this is entirely
inconsistent with the evidence in the record regarding A-B's
policy at that time. The policy was designed so that unsolicited
submissions would be routed to a particular Brand Manager, who
would review the submission and then respond to sender. Moreover,
Lachky's letters indicate that he did review such submissions on
at least some occasions. Therefore, there is a triable issue of
fact as to whether or not Lachky saw the plaintiff's scripts
prior to the creation of the Budweiser Frogs commercials.
Moreover, the Court finds that there is a triable issue of fact
as to whether or not Lachky had contact with Michael Smith prior
to the date that Smith and his advertising firm wrote their
commercial. While Lachky testified that he had never met Smith
prior to the day that the frogs commercial was first proposed to
A-B, Smith testified that he had met with Lachky several times
before that date. Moreover, there is at least a "probative
similarity" between two commercials for Budweiser Beer involving
hip, humorous frogs, where one involves a frog that croaks "Bud
Bud" and the other involves frogs who croak "Bud," "weis" and
"er." Accordingly, the plaintiff has demonstrated a genuine issue
of material fact as to whether or not the defendants actually
copied his scripts.
B. SUBSTANTIAL SIMILARITY
A finding of substantial similarity
requires that the copying [be] quantitatively and
qualitatively sufficient to support the legal
conclusion that infringement (actionable copying) has
occurred. The qualitative component concerns the
copying of expression, rather than ideas [, facts,
works in the public domain, or any other
non-protectable elements]. . . . The quantitative
component generally concerns the amount of the
copyrighted work that is copied, which must be more
than "de minimis."
Castle Rock Entertainment, Inc., 150 F.3d at 138 (citation
omitted, emphasis added). Again, "[t]he similarity to be assessed
must concern the expression of ideas, not the ideas themselves."
Warner Bros. Inc. v. American Broadcasting Companies,
720 F.2d 231
, 239 (2d Cir. 1983). As the Second Circuit held in Warner
[t]hough the issue of substantial similarity is
frequently a fact issue for jury resolution . . . a
court may determine non-infringement as a matter of
law on a motion for summary judgment, either because
the similarity between two works concerns only
"non-copyrightable elements of the plaintiff's work"
. . . or because no reasonable jury, properly
instructed, could find that the two works are
Id. at 239-40.
Where the plaintiff's claim is that the defendants' character
infringes his copyrighted character, the Court "must consider the
`totality of [their] attributes and traits' as well as the extent
the defendants' characters capture the `total concept and feel'"
of the plaintiff's character. Walker v. Time Life Films, Inc.,
784 F.2d 44, 50 (2d Cir. 1986) (citing Warner Brothers Inc., 720
F.2d at 241), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90
L.Ed.2d 721 (1986). As the Second Circuit held in Warner
care must be taken to draw the elusive distinction
between a substantially similar character that
infringes a copyrighted character despite slight
differences in appearance, behavior, or traits, and a
somewhat similar though non-infringing character
whose appearance, behavior, or traits, and especially
their combination, significantly differ from those of
a copyrighted character, even though the second
character is reminiscent of the first one.
720 F.2d at 242.
Applying these principles of law to the facts of this case, the
Court finds as a matter of law that the defendants' frogs are not
substantially similar to the plaintiff's frog. It is true that
all of the characters at issue here are frogs who promote
Budweiser Beer. However, the idea of using a frog to promote beer
is not subject to copyright protection. Apart from the fact that
they are frogs, the greatest similarity between the characters is
that the plaintiff's frog croaks "BUD BUD," while the defendants'
frogs croak "Bud," "weis" and "er." However, the differences
between these characters far outweigh the similarities. For
instance, the plaintiff's frog croaks "BUD BUD" only once in one
of his seven scripts. Moreover, the fact that the plaintiff's
frog croaks "BUD BUD" is only important in the context of that
particular script. In that script, the plaintiff creates an
amusing variation of the well-known story of the princess who
kisses a frog, thereby turning the frog into a prince. While the
other frog in the script croaks "RRIBBET RRIBBET," the
plaintiff's frog croaks "BUD BUD," thereby setting up the
scenario where the female actress chooses Budweiser Beer over the
possibility of finding a prince. However, the plaintiff's frog
does not make the "BUD BUD" sound in any of the other scripts,
clearly demonstrating that the ability to croak "BUD BUD" is not
a central or even important characteristic of the plaintiff's
frog overall. Clearly, the most well-defined characteristics of
the plaintiff's frog are his hip attitude and his appearance,
which is semi-human*fn4 and involves wearing various outfits
along with his neon green mirrored sunglasses. The scripts do not
provide a physical description of the frog. The plaintiff's frog
plays the role of a sort of "master of ceremonies," who with the
exception of the first script, does not appear until after the
human actors in the commercial have made a choice to drink
Budweiser Beer. At that point in the commercials, the plaintiff's
frog appears and expresses his approval toward the commercials'
protagonists. The overall feel of the commercial is that
Budweiser Beer is hip and even more desirable than things such as
romance or being rescued from a deserted island.
Turning to the defendants' frogs, it is obvious that they have
almost nothing in common with the plaintiff's frog. The
defendants frogs are clearly mere frogs, who happen to live in a
swamp near a bar that advertises and serves Budweiser Beer. The
only "human" qualities that these frogs possess are the ability
to read*fn5 and the ability to make certain vocal sounds and
facial expressions. When the first frog croaks "Bud" in the first
commercial, it is presumably not because that is the only sound
that he can make, but rather is because he is reading the first
syllable of the Budweiser sign above him. Moreover, their ability
to make the "Bud," "weis," and "er" sounds is perhaps the
frogs' single most distinctive feature, and is present in all of
the defendants' commercials. No human beings appear in the
defendants' commercials. The overall theme and feel of the
defendants' commercials is that Budweiser Beer has a universal
appeal, extending even to frogs. As a result of this appeal, the
otherwise ordinary frogs do things that have humorous and
unexpected results, such as jumping into a speedboat, attaching
their tongues to a speeding delivery truck, and attaching their
tongues to a frozen can of beer. The defendants' later
commercials focus primarily on the humorous actions of the two
lizards, Louie and Frankie, with the frogs playing only a minor
Accordingly, the Court finds the copying, if any occurred, is
not quantitatively and qualitatively sufficient to support the
legal conclusion that infringement has occurred. The Court
further finds that because of the vast differences between the
"attributes and traits" of the parties' frogs, and because of the
differences in the "total concept and feel" of the two works, no
reasonable jury could find that the two works are substantially
similar. Therefore, the defendants are entitled to summary
judgment on the copyright infringement claim.
II. PLAINTIFF'S STATE LAW CLAIMS
The plaintiff has also alleged causes of action for breach of
implied contract, promissory estoppel, unjust enrichment and
misappropriation. The defendants contend that all of these
state-law causes of action are preempted by 17 U.S.C. § 301,
which, with certain exceptions not applicable here, preempts all
legal or equitable rights within the general scope of federal
copyright law, as well as any equivalent rights, found under
state law. At oral argument, the plaintiff conceded that his
claims for promissory estoppel, unjust enrichment and
misappropriation should be dismissed. However, in his memorandum
of law opposing summary judgment and at oral argument, the
plaintiff maintained that his claim for breach of implied
contract is not preempted, because he is seeking to recover for
the "defendants' unlawful use of uncopyrightable elements
[ideas] in his scripts." (Plaintiff's Memorandum of Law in
Opposition to Defendants' Motion for Summary Judgment, p.
38) (emphasis added). However, the plaintiff's complaint clearly
states that his breach of implied contract claim is based upon
the defendants' alleged use of his "copyrighted works."
(Plaintiff's Complaint, ¶¶ 47-48). Accordingly, the Court also
finds that the breach of implied contract claim is preempted and
should also be dismissed. See, Markogianis v. Burger King
Corp., No. 95 CIV. 4627(JFK) 1997 WL 167113 at *2, 5-6 (Apr. 8,
1997 S.D.N.Y.), motion for reconsideration denied, 1997 WL
701338 (Nov. 7, 1997 S.D.N.Y.). In any event, even if the Court
had found that the plaintiff's claim for breach of implied
contract was not preempted, the Court would have declined to
exercise supplemental jurisdiction over that claim, pursuant to
28 U.S.C. § 1367(c)(3).
Accordingly, the defendants' motion [# 16] for summary judgment
is granted in its entirety, and this action is dismissed, with