NOT FOR PUBLICATION FILED

UNITED STATES COURT OF APPEALS JUL 22 2020

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

FOR THE NINTH CIRCUIT

ARTHUR LEE ALFRED II; et al., No. 19-55669

Plaintiffs-Appellants, D.C. No. 2:18-cv-08074-CBM-AS v.

THE WALT DISNEY COMPANY; et al., MEMORANDUM*

Defendants-Appellees.

Appeal from the United States District Court for the Central District of California Consuelo B. Marshall, District Judge, Presiding

Argued and Submitted July 6, 2020 Pasadena, California

Before: PAEZ and BADE, Circuit Judges, and MELGREN,** District Judge.

Plaintiffs A. Lee Alfred, II, Ezequiel Martinez, Jr., and Tova Laiter appeal

the district court’s 12(b)(6) dismissal of their copyright infringement suit against

Defendant-Appellees (collectively, “Defendants”). They argue that the court (1)

erred in granting Defendants’ motion to dismiss because Plaintiffs’ screenplay is

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ** The Honorable Eric F. Melgren, United States District Judge for the District of Kansas, sitting by designation. substantially similar to Defendants’ Pirates of the Caribbean: Curse of the Black

Pearl film; (2) abused its discretion in denying Plaintiffs leave to amend their

complaint; and (3) abused its discretion in taking judicial notice of the Disney

World Pirates of the Caribbean theme park ride as it existed in 2005. We have

jurisdiction over the court’s dismissal under 28 U.S.C. § 1291. For the reasons that

follow, we reverse and remand.

1. To state a claim for copyright infringement, Plaintiffs must show that (1)

they owned a valid copyright in their screenplay, and (2) Defendants copied

protected aspects of their work. Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499

U.S. 340, 361 (1991). The element prohibiting Defendant from copying protected

aspects requires that Plaintiffs demonstrate that there are, in short, “substantial

similarities” between the two works. Skidmore v. Zeppelin, 952 F.3d 1051, 1064

(9th Cir. 2020) (en banc). At the pleading stage, district courts apply only the

“extrinsic test” for similarity, which asks whether the defendant’s work shares

objective similarities of specific expressive elements with the allegedly infringed

piece. Rentmeester v. Nike, Inc., 883 F.3d 1111, 1117 (9th Cir. 2018), overruled

on other grounds by Skidmore, 952 F.3d 1051. Defendants moved to dismiss

Plaintiffs’ copyright infringement claims solely on the ground that the two works

were not substantially similar as a matter of law.

2 When evaluating the two works, courts must generally distinguish between

protectible and unprotectible elements, and “ask only whether the protectible

elements in two works are substantially similar.” L.A. Printex Indus., Inc. v.

Aeropostale, Inc., 676 F.3d 841, 849 (9th Cir. 2012), abrogated on other grounds

as recognized by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194

(9th Cir. 2020). But—even when individual elements are not protected—their

“[o]riginal selection, coordination, and arrangement . . . may be protectible

expression.” Id.. Summary judgment or dismissal is appropriate if, taken as a

whole, “no reasonable jury could find that the works are substantially similar using

the objective criteria of the extrinsic test.” Kouf v. Walt Disney Pictures &

Television, 16 F.3d 1042, 1045 (9th Cir. 1994).

We agree with Plaintiffs that the screenplay shares sufficient similarities

with the film to survive a motion to dismiss. The Pirates of the Caribbean: Curse

of the Black Pearl film and the screenplay both begin with a prologue that takes

place ten years prior to the main story; introduce the main characters during a

battle, at gunpoint; involve treasure stories that take place on islands and in jewel-

filled caves; include past stories of betrayal by a former first mate; contain fearful

moments driven by skeleton crews; focus on the redemption of a young, rogue

pirate; and share some similarities in dialogue and tone. To be sure, there are

striking differences between the two works, as well—but the selection and

3 arrangement of the similarities between them is more than de minimis. See Apple

Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1439 (9th Cir. 1994).

The district court noted some of these similarities but dismissed the action

largely because it concluded that many of the elements the two works share in

common are unprotected generic, pirate-movie tropes. But, at this stage of the

litigation, it is difficult to know whether such elements are indeed unprotectible

material. Additional evidence would help inform the question of substantial

similarity. Cf. Rentmeester, 883 F.3d at 1123 (“This is not a case in which

discovery could shed light on any issues that actually matter to the outcome.”). As

Plaintiffs note, expert testimony would aid in determining whether the similarities

Plaintiffs identify are qualitatively significant. See Newton v. Diamond, 388 F.3d

1189, 1196 (9th Cir. 2004). This would be particularly useful in this circumstance,

where the works in question are almost twenty years old and the blockbuster

Pirates of the Caribbean film franchise may itself have shaped what are now

considered pirate-movie tropes.

The district court erred by failing to compare the original selection and

arrangement of the unprotectible elements between the two works. Because

Plaintiffs sufficiently allege that there are substantial similarities between the

works to survive Defendants’ motion-to-dismiss, we reverse the district court’s

dismissal and remand.

4 2. The district court did not err by failing to apply the inverse-ratio rule.

Sitting en banc, we overruled the inverse-ratio doctrine after the district court’s

decision. In Skidmore, we concluded that the rule “is not part of the copyright

statute, defies logic, and creates uncertainty for the courts and the parties,” and

“abrogate[d] the rule in the Ninth Circuit and overrule[d] our prior cases to the

contrary.” 952 F.3d at 1066. Even if Plaintiffs are correct that the court should

have applied the doctrine, Skidmore has since mooted their argument.

3. The court also did not err by failing to accord broad copyright protection

to Plaintiffs’ screenplay. Plaintiffs are correct that the idea of pirate films or

stories are entitled to broad—not narrow—copyright protection, see, e.g., Mattel,

Inc. v. MGA Entm’t, Inc., 616 F.3d 904, 913–14 (9th Cir. 2010), but the district

court did not once state that the screenplay was entitled to thin protection or

require Plaintiffs to show that the two works were virtually identical. We cannot

conclude that the court erred by treating the screenplay as entitled to thin

protection.

4. Finally, in light of the above disposition, we need not address whether the

district court abused its discretion either in denying Plaintiffs leave to amend their

complaint or in taking judicial notice of the Disney World theme park ride. These

issues are now moot. On remand, Plaintiffs may again request leave to amend

5 their complaint, and both sides will be able to produce additional, relevant

evidence as is needed.

REVERSED and REMANDED.

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