Rodney A. Smolla, President, Furman University
January 29, 2013

In Effie Film, LLC v. Pomerance,1 the court grappled with a fascinating intellectual property conflict involving the peculiar free expression values that are implicated when copyright interests intersect with historic facts in the context of history fiction.

Eve Pomerance owned a copyright in two screenplays about the dramatic and intertwined lives of John Ruskin, John Everett Millais, and Euphemia (“Effie”) Gray – two stars of the Victorian art world, and the woman who was married to each of them. In turn, Emma Thompson wrote a screenplay about the same historical figures. That Emma Thompson work was turned into a film, which included as its actors Emma Thompson herself, as well as Dakota Fanning and Robbie Coltrane. In determining whether the Thompson film, “Effie,” infringed on the Pomerance works, “The King of the Golden River” and “The Secret Trials of Effie Gray,” the court had to separate those elements of the works that were factual history, and thus not subject to copyright protection, and those creative elements of the initial copyrighted works, which were.

The court framed its analysis through the prism of the noteworthy Second Circuit decision in Hoehling v. Universal City Studios, Inc.,2 involving the famous Hindenburg airship disaster. A.A. Hoehling, author of the book Who Destroyed the Hindenburg?, sued another author and a movie studio for infringing his copyright in their accounts of that famous, doomed airship. The Second Circuit in Hoehling crystallized the analysis for historical fiction:

A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains. The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by creating original works. Nevertheless, the protection afforded the copyright holder has never extended to history, be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is best served when history is the common property of all, and each generation remains free to draw upon the discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed, embracing no more than the author’s original expression of particular facts and theories already in the public domain.3

The Hoehling framework, however, has not gone uncriticized. In Nash v. CBS, Inc.,4 for example, Judge Frank Easterbrook argued that the Hoehling framework may fail to adequately protect the labor of the first investigator into an historic event. “The authors in Hoehling … spent years tracking down leads. If all of their work, right down to their words, may be used without compensation, there will be too few original investigations, and facts will not be available on which to build.”5 As Judge Easterbrook elegantly explained:

Every work uses scraps of thought from thousands of predecessors, far too many to compensate even if the legal system were frictionless, which it isn’t. Because any new work depends on others even if unconsciously, broad protection of intellectual property also creates a distinct possibility that the cost of litigation – old authors trying to get a “piece of the action” from current successes – will prevent or penalize the production of new works, even though the claims be rebuffed…. Yet to deny authors all reward for the value their labors contribute to the works of others also will lead to inefficiently little writing, just as surely as excessively broad rights will do. The prospect of reward is an important stimulus for thinking and writing, especially for [authors] who are full-time authors.6

The Court in Effie Film, LLC v. Pomerance7 noted the tension between these economic incentives and the values of copyright law, which are in alignment with the values of the First Amendment, that seem to impel the relegation of certain elements of history, and the interpretive ideas that form a gloss on that history, into the public domain. “Although the relation between ‘expression’ in copyright law and in the first amendment remains unclear, both doctrines accept that some information must remain freely accessible and usable by all.”8 The court in Effie held that the economic critique of Hoehling missed the mark by indulging a misplaced conception of the underpinnings of copyright law. The critique, by “insisting that historians put original work into producing facts and interpretations – essentially assumes a labor-desert theory of copyright law and argues that historians are entitled to more robust property protection because they are performing the requisite creative labor.”9 Yet, the court reasoned, Hoehling was “concerned primarily with the unique importance of maintaining a free flow of accessible historical information.”10

The court then compared “creativity in history” with other forms of creativity in fiction. “Creativity in history may approximate the creative process of generating works of fiction, but is arguably of a different sort by virtue of historians’ goal of accurately representing past reality and the shared professional norms that discipline factual and interpretive adventurousness.”11 These differences, the court reasoned, “coupled with the special role that historical knowledge plays in democratic deliberation, may justify different treatment of originality doctrine with respect to historical facts and interpretation.”12

Moreover, the court suggested, incentive-based arguments may ultimately support the approach in Hoehling. “[G]iven the growth of a large professoriate motivated – professionally, personally, and financially – to generate new historical information even in the absence of strong copyright protections, weak protection may suffice to maximize production, or at least to push it above an independently specified floor.”13 In its distillation of these complexities, the court summarized:

Courts must therefore take particular care in performing substantial similarity analysis when one or both of the disputed works belongs to the genre of historical fiction. In such cases, copyright analysis requires an initial separation of protectible from unprotectible elements – in other words, a separation out of the unprotectible historical facts and interpretations. Once that separation is achieved to the greatest extent possible, courts must test for violations of the full copyright protection afforded to the remaining protectible elements. In some cases, it may also be appropriate to test for violations of the “thin” copyright protection afforded to originality in the arrangement of unprotectible facts. In this case, however, the two inquiries essentially collapse into a single analysis because the creative arrangement of unprotectible historical facts for purposes of “thin” protection is achieved through narrative devices (theme, characterization, pace) that span the entirety of the works and encompass the protectible fictionalizations.14

Applying these principles, the court held that to the extent that the disputed works “are similar with respect to plot structure, individual scenes, settings, or features of individual characters that reflect historical facts or interpretations, those similarities do not count toward substantial similarity analysis.”15 Rather, “substantial similarity must be shown through reference to the creative aspects of these works, such as fictional plot developments, scenes, settings, and character traits.”16 In addition, substantial similarity “can also be demonstrated through reference to creative devices that span the protectible and unprotectible elements of the works and transform the atomized facts into a meaningful, fictional story.”17 Such “devices include pace, theme, and narrative structure.”18 Proceeding to separate out the unprotectible elements of the works before it, the court concluded that “Effie”” was not substantially similar to the creative works of Pomerance that preceded it.19