METRO-GOLDWYN-MAYER, INC., et al., Plaintiffs, v. AMERICAN

                   HONDA MOTOR CO., INC., et al., Defendants.


                              CV 94-8732-KN (Mcx)






                  900 F. Supp. 1287; 1995 U.S. Dist. LEXIS 19169


                            March 29, 1995, DATED

            March 31, 1995, ENTERED, DOCKETED; March 29, 1995, FILED





   Based on the papers submitted and the brief arguments presented at the March

13, 1995 hearing, the Court GRANTS Plaintiffs' motion for a preliminary

injunction and DENIES  Defendants' motion for summary judgment for the reasons

set forth below.


   The Court ORDERS that Defendants, their agents, employees, representatives,

and all others purporting to work, or working, on their behalf, be, and by this

order are, enjoined from continuing to infringe on Plaintiffs' copyrighted works

by displaying or exhibiting in any manner, or causing to be displayed or

exhibited in any manner, the Honda del Sol commercial which is the subject of

this action, in any medium, including network or cable television or movie




I. Introduction


   This case arises out of Plaintiffs Metro-Goldwyn-Mayer's and Danjaq's claim

that Defendants American Honda Motor Co. and its advertising agency Rubin

Postaer and Associates, violated Plaintiffs' "copyrights to sixteen James Bond

films and the exclusive intellectual property rights to the James Bond character

and the James Bond films" through Defendants' recent commercial for its Honda

del Sol automobile.


   Premiering last October 1994, Defendants' "Escape" commercial features a

young, well-dressed couple in a Honda del Sol being chased by a high-tech

helicopter. A grotesque villain with metal-encased arms jumps out of

the helicopter onto the car's roof, threatening harm. With a flirtatious turn to

his companion, the male driver deftly releases the Honda's detachable roof

(which Defendants claim is the main feature allegedly highlighted by the

commercial), sending the villain into space and effecting the couple's speedy



   Plaintiffs move to enjoin Defendants' commercial pending a final trial on the

merits, and Defendants move for summary judgment.



II. Factual Background


   In 1992, Honda's advertising agency Rubin Postaer came up with a new concept

to sell the Honda del Sol convertible with its detachable rooftop. For what was

to become the commercial at issue, Rubin Postaer vice-president Gary

Yoshida claims that he was initially inspired by the climax scene in "Aliens,"

wherein the alien is ejected from a spaceship still clinging onto the spacecraft's

door. From there, Yoshida and coworker Robert Coburn began working on the

storyboards for the "Escape" commercial. As the concept evolved into the

helicopter chase scene, it acquired various project names, one of which was

"James Bob," which Yoshida understood to be a play on words for James Bond.

Yoshida Depo.


   With the assistance of the same special effects team that worked on

Arnold Schwarzenegger's "True Lies," Defendants proceeded to create a sixty- and

thirty-second version of the Honda del Sol commercial at issue: a fast-paced

helicopter chase scene featuring a suave hero and an attractive heroine, as well

as a menacing and grotesque villain.


   The commercial first aired on October 24, 1994, but was apparently still not

cleared for major network airing as late as December 21, 1994. Plaintiffs first

viewed the film during the weekend of December 17 and 18, 1994; they demanded

that Defendants pull the commercial off the air on December 22; Defendants

refused on December 23; and Plaintiffs filed this action on December 30, 1994.

After a brief telephone conference with this Court on January 4, 1995, the Court

allowed Plaintiffs to conduct expedited discovery in this matter.


   On January 15, 1995, in an effort to accommodate Plaintiffs' demands without

purportedly conceding liability, Defendants changed their commercial by: (1)

altering the protagonists' accents from British to American; and (2) by changing

the music to make it less like the horn-driven James Bond theme. This version of

the commercial was shown during the Superbowl, allegedly the most widely

viewed TV event of the year.



III. Legal Analysis


   A claim for copyright infringement requires that the plaintiff prove (1) its

ownership of the copyright in a particular work, and (2) the defendant's copying

of a substantial, legally protectable portion of such work ...  The plaintiff need only

show that the defendant copied the protectable portion of its work to establish a prima

facie case of infringement ...


   b. What Elements Of Plaintiffs' Work Are Protectable Under Copyright Law


   Plaintiffs contend that Defendants' commercial infringes in two independent

ways: (1) by reflecting specific scenes from the 16 films; and (2) by the male

protagonist's possessing James Bond's unique character traits as developed in

the films.


   Defendants respond that Plaintiffs are simply trying to gain a monopoly over

the "action/spy/police hero" genre which is contrary to the purposes of

copyright law. Specifically, Defendants argue that the allegedly infringed

elements identified by Plaintiffs are not protectable because: (1) the

helicopter  chase scene in the Honda commercial is a common theme that

naturally flows from most action genre films, and the woman and villain in the

film are but stock characters that are not protectable; and (2) under the Ninth

Circuit's Sam Spade decision, the James Bond character does not constitute the

"story being told," but is rather an unprotected dramatic character.


   (1) Whether Film Scenes Are Copyrightable


   In their opening brief,  Plaintiffs contend that each of their

sixteen films contains distinctive scenes that together comprise the classic

James Bond adventure: "a high-thrill chase of the ultra-cool British charmer and

his beautiful and alarming sidekick by a grotesque villain in which the hero

escapes through wit aided by high-tech gadgetry." Defendants argue that these

elements are naturally found in any action film and are therefore unprotected



   Situations, incidents, or events that naturally flow from a common theme,

or setting or basic plot premise are "scenes-a-faire." ... In Universal City Studios v.

Film Ventures International, Inc., this Court granted a preliminary

injunction to the copyright holders of "Jaws" finding that they were likely to

prevail on the issue of intrinsic substantial similarity against the movie

"Great White," another shark-attack film. In so doing, the Court rejected the

defendants' characterization of the plaintiffs' expression of ideas as

unprotectable scenes-a-faire: "The Court rejects Defendants' overly expansive

view of that which falls within the unprotected sphere of general ideas and

scenes a faire, and instead adopts Plaintiffs' characterization of that which

constitutes the expression of ideas." It appears that in this case,

as in Universal, Defendants are attempting to claim that all elements of the

commercial are unprotected, and therefore, the commercial as a whole is

non-infringing. This Court rejected this approach in Universal, and does so here

as well.


   Plaintiffs' experts describe in a fair amount of detail how James Bond films

are the source of a genre rather than imitators of a broad "action/spy film"

genre as Defendants contend. Specifically, film historian Casper explains how

the James Bond films represented a fresh and novel approach because they

"hybridized the spy thriller with the genres of adventure, comedy (particularly,

social satire and slapstick), and fantasy. This amalgam . . . was also a

departure from the series' literary source, namely writer Ian Fleming's novels."

Casper also states: "I also believe that this distinct melange of genres ... created

a protagonist, antagonist, sexual consort, type of mission, type of  exotic setting,

type of mood, type of dialogue, type of music, etc. that was not there in the

subtype of the spy thriller films of that ilk hitherto."


   In rebuttal, Plaintiffs present the declarations of: (1) Brian Clemens, who

produced many episodes of "The Avengers" and "Danger Man," as well as having

worked on "The Saint"; and (2) David Rogers, a leading authority on "The

Avengers" and Patrick McGoohan, the star of "Danger Man." Both experts state

that no part of the Honda commercial resembles either the "The Avengers,"

"Danger Man," or "The Saint," and that the commercial is a copy of a James Bond



   Based on Plaintiffs' experts' greater familiarity with the James Bond films,

as well as a review of Plaintiffs' James Bond montage and defense expert Needham's

video montage of the "action/spy" genre films, it is clear that James Bond

films are unique in their expression of the spy thriller idea. A filmmaker could

produce a helicopter chase scene in practically an indefinite number of ways,

but only James Bond films bring the various elements Casper describes together

in a unique and original way.


   Thus, the Court believes that Plaintiffs will likely succeed on their claim

that their expression of the action film sequences in the James Bond films is

copyrightable as a matter of law.


   (2) Whether James Bond Character Is Copyrightable


   The law in the Ninth Circuit is unclear as to when visually-depicted

characters such as James Bond can be afforded copyright protection. In

the landmark Sam Spade case, Warner Bros., 216 F.2d at 950, the Ninth Circuit

held that the literary character Sam Spade was not copyrightable because he did

not constitute "the story being told." The court opined: "It is conceivable that

the character really constitutes the story being told, but if the character is

only the chessman in the game of telling the story he is not within the area of

the protection afforded by the copyright."


   Two subsequent Ninth Circuit decisions have cast doubt on the continued

viability of the Sam Spade holding as applied to graphic characters. In Walt

Disney Productions v. Air Pirates, 581 F.2d 751, 755 (9th Cir. 1978), cert.

denied, 439 U.S. 1132, 59 L. Ed. 2d 94, 99 S. Ct. 1054 (1979), the circuit panel

held that several Disney comic book characters were protected by copyright. In

acknowledging the Sam Spade opinion, the court reasoned that because "comic book

characters . . . are distinguishable from literary characters, the [Sam Spade]

language does not preclude protection of Disney's characters." ...


   Predictably, Plaintiffs claim that under either test, James Bond's character

as developed in the sixteen films is sufficiently unique and deserves copyright

protection ... Plaintiffs point to various character traits that are specific

to Bond -- i.e. his cold-bloodedness; his overt sexuality; his love of martinis

"shaken, not stirred;" his marksmanship; his "license to kill" and use of guns;

his physical strength; his sophistication -- some of which, Plaintiffs' claim,

appear in the Honda commercial's hero.


   On the other hand, Defendants assert that, like Sam Spade, James Bond is not

the "story being told," but instead "has changed enormously from film to film,

from actor to actor, and from year to year." Moreover, Defendants contend

that even if Bond's character is sufficiently delineated, there is so little

character development in the Honda commercial's hero that Plaintiffs cannot

claim that Defendants copied more than the broader outlines of Bond's

personality. See, e.g., Smith v. Weinstein, 578 F. Supp. 1297, 1303 (S.D.N.Y.),

aff'd, 738 F.2d 419 (2d Cir. 1984) ("no character infringement claim can succeed

unless plaintiff's original conception sufficiently developed the character, and

defendants have copied this development and not merely the broader outlines").


   Reviewing the evidence and arguments, the Court believes that James Bond is

more like Rocky than Sam Spade -- in essence, that James Bond is a copyrightable

character under either the Sam Spade "story being told test" or the Second

Circuit's "character delineation" test. Like Rocky, Sherlock Holmes, Tarzan,

and Superman, James Bond has certain character traits that have been

developed over time through the sixteen films in which he appears. Contrary to

Defendants' assertions, because many actors can play Bond is a testament to the

fact that Bond is a unique character whose specific qualities remain

constant despite the change in actors. Indeed, audiences do not watch

Tarzan, Superman, Sherlock Holmes, or James Bond for the story, they watch these

films to see their heroes at work. A James Bond film without James Bond is not a

James Bond film. Moreover, as discussed more specifically below, the Honda Man's

character, from his appearance to his grace under pressure, is substantially

similar to Plaintiffs' Bond.