by Azita Mirzaian
Allegations of “idea theft” are fairly common in the creative world. Perhaps one of the most common “idea theft” scenarios is the situation in which a creator pitches an idea for a film or television show to a potential producer, collaborator, or investor, and later learns that this person took the idea and ran with it, cutting the creator out of the equation entirely. In these situations, the jilted creator wants to pursue all possible legal remedies against the “idea thief,” but due to the particular nature of copyright law (and due to preemption), it can often be difficult to determine what remedies are available to the creator.
The key thing to remember is that U.S. copyright law protects expressions of ideas, not ideas themselves; ideas are generally free to be used, expressed, re-used, and re-expressed. If ideas were copyrightable, then people would be suing one another left and right for copyright infringement, artistic expression would be restricted and hindered, and society would be worse off – courts and legislators recognize this, and this is why they have generally maintained that people cannot hold protectible property interests in their ideas. So the protections of U.S. copyright law are of little use to the jilted creator who wants to go after an “idea thief.”
Further complicating matters is the fact that Section 301(b) of the Copyright Act states that federal copyright law preempts common law claims or state law claims in situations in which the claims or rights being asserted are “equivalent to any of the exclusive rights within the general scope of copyright.” In other words, if the rights that the creator is claiming were violated are essentially the same as those covered by copyright law, then federal copyright law applies and the creator cannot bring separate common law or state law claims. This seems to leave our jilted creator in a difficult situation.
However, there are some limited instances in which the victims of “idea theft” can bring viable legal claims against their “idea thieves” under contract law.
In the 1956 case Desny v. Wilder, the California Supreme Court recognized that, in these types of situations, a creator may have an implied contractual right to compensation that is independent of any kind of copyright claim he or she may have. In Desny, a screenwriter submitted his idea for a movie to a producer and made it clear that he expected to be paid if the producer used the idea. When the producer later used the idea but refused to pay the screenwriter, the screenwriter filed a suit. The Court in Desny held that in a situation in which a creator submits an idea or material to a producer and makes it clear that he or she expects compensation for the use of the idea or material, there is an implied contractual right to compensation. The creator may recover compensation for the disclosure of his or her idea if (1) before or after disclosure of the idea, the creator has obtained an express promise to pay, or (2) the circumstances preceding and attending the disclosure of the idea, together with the producer’s conduct and knowledge of the circumstances, indicate the existence of an implied promise to pay. Desny v. Wilder (1956) 46 Cal.2d 715, 738.
To survive preemption by copyright law, a common law claim or state law claim must allege an “extra element” that changes the nature of the action. Grosso v. Miramax (2004) 383 F.3d 965, 968. A Desny claim survives preemption by copyright law because it is actually a claim for the breach of the express or implied promise to pay for the communication of an idea, and not a claim for the use (or misuse) of an idea that was communicated – it “transforms the action from one arising under the ambit of the federal statute to one sounding in contract.” Id. By contrast, a claim for unjust enrichment is essentially equivalent to a claim for copyright infringement, and is therefore preempted by copyright law. Montz v. Pilgrim Films & Television, Inc. (2011) 649 F.3d 975, 977. Similarly (and somewhat noteworthy for attorneys who are framing claims for their creator clients), a claim for breach of implied contract, where the implied contract is an agreement to not violate the creator’s exclusive rights to use and authorize use of his or her work, is essentially equivalent to a copyright claim and is therefore preempted by copyright law. Montz v. Pilgrim Films & Television, Inc. (2010) 606 F.3d 1153, 1157.
Desny claims provide a critical form of protection for creators and have remained viable under California law for nearly six decades now. Montz v. Pilgrim Films & Television, Inc. (2011) 649 F.3d 975, 977. In other states, however, the law is not as settled (for example, see the 2nd Circuit case Forest Park Pictures v. Universal Television Network, Inc. (2012) 683 F.3d 424, 434).
To establish a Desny claim in California, the creator must be able to show (1) that he or she prepared the work/idea/pitch; (2) that he or she disclosed it to the recipient party for sale; (3) that the recipient party, knowing that the disclosure was offered for sale and knowing the conditions on which the disclosure was made, voluntarily accepted and used the disclosed materials; and (4) that the disclosed work/idea/pitch had a reasonable value. Desny v. Wilder (1956) 46 Cal.2d 715, 744; Faris v. Enberg (1979) 97 Cal. App. 3d 309, 318; Grosso v. Miramax Film Corp. (2004) 383 F.3d 965, 967.
In reality, it is often difficult for a creator to definitively establish all of the elements of the Desny claim (especially the third and fourth elements). For this reason, if a creator in the entertainment industry is looking to pitch an idea to potential producers, collaborators, or investors, the most prudent course of action is to obtain an express promise to pay (preferably in writing) for the disclosure and use of the idea prior to the disclosure of the idea. However, given the fast-paced realities of the entertainment industry, creators can often encounter difficulties in trying to obtain such express promises. In such situations, creators can rest easy knowing that, given the proper circumstances, the Desny claim has got them covered.
Azita Mirzaian is an associate attorney at Pierce Law Group LLP, where she practices with a focus on entertainment law, intellectual property law, and contractual disputes. Her areas of interest include copyright matters, trademark matters, and right of publicity matters.