METRO-GOLDWYN-MAYER, INC., et al., Plaintiffs, v. AMERICAN
HONDA MOTOR CO., INC., et al., Defendants.
CV 94-8732-KN (Mcx)
UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF
900 F. Supp. 1287; 1995 U.S. Dist. LEXIS 19169
March 29, 1995, DATED
March 31, 1995, ENTERED, DOCKETED; March 29, 1995, FILED
ORDER RE: (1) MOTION FOR PRELIMINARY INJUNCTION; (2) MOTION FOR
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
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.
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
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
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.