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 F.C.J. No. 1011
Preston v. 20th Century Fox Canada Ltd.
Dean Preston, Plaintiff v. 20th Century Fox Canada Limited, George Lucas and Lucas Films Ltd., Defendants
Judgment: November 9, 1990
Docket: Doc. T-142-85
Counsel: Webster McDonald, Sr., for the Plaintiff.
W. Graham Dutton, Q.C., Rita V. Bambers, for the Defendants.
Copyright --- Material in which copyright may subsist — Literary works
Motion picture characters.
Plaintiff commenced an action for damages for copyright infringement of his literary work “Space Pets” which he claimed was used without consent in the film “Return of the Jedi” in the use of the characters called “Ewoks”. Held, the action was dismissed. There existed no substantial similarity between plaintiff’s work and defendant’s motion picture. Furthermore, the characteristics of the film “Ewoks” were not sufficiently delineated to warrant recognition as characters subject to copyright.
MacKay, J. reasons for judgment:
Introduction - the action, the parties, an overview9
1 In this action, the plaintiff, who describes himself as a writer, producer and entrepreneur in the entertainment industry, residing in Calgary, Alberta, seeks a variety of remedies against the defendants based on alleged infringement of copyright claimed by the plaintiff in a literary work entitled Space Pets.110
2 The basis of the claim of the plaintiff is that the defendants used the work said to have been created by the plaintiff without the latter’s knowledge, consent or authority in a motion picture entitled Return of the Jedi and in a television series Ewok Adventure and in various other forms and mediums.11
3 The defendant, George Lucas, is a well-known motion picture producer, writer and director of films, a major shareholder and Chairman of the Board of the corporate defendant Lucasfilm Ltd., who resides in California. The correct legal names of the defendant corporations are Twentieth Century-Fox Canada Limited and Lucasfilm Ltd. The former carries on business in Alberta and elsewhere in Canada as a distributor of motion pictures and the latter has its head office in California in the United States of America.12
4 The defendants together are the producers and distributors, among other films, of a series of films known as the Star Wars trilogy, the third film in this series being Return of the Jedi. That film, and others in the Star Wars series, were very successful at the box office and together with the marketing of related wares and merchandise, they led to very significant financial success in the late 1970’s and early 1980’s.13
5 In this action, commenced by statement of claim in 1985, Mr. Preston, the plaintiff, seeks
1) a declaration that the plaintiff has enforceable copyright in the whole, or in the alternative in pages 1 and 2, of the literary work Space Pets and that this copyright has been infringed by the defendants;
2) an injunction restraining the defendants from infringing the plaintiff’s copyright in the literary work Space Pets;
3) general damages in an amount of some millions of dollars as well as significant punitive and exemplary damages;
4) an order directing the defendants to deliver up to the plaintiff all infringing copies of the literary work in possession of or under the control of the defendants made in infringement of the plaintiff’s copyright, and damages for conversion of all infringing copies made by the defendants;
5) an accounting; and
6 It may be helpful before setting out issues, reviewing the evidence, and settling essential facts to describe in summary outline the case that the testimony of the parties portrays.16
7 The plaintiff Preston claims that he wrote an unspecified number of pages, some fifteen to twenty-five pages, of notes, in his handwriting, which were designed as a story line for the script of a television or movie film. These he gave to his friend Mr. David Hurry, for whose abilities as a script writer he had a high regard. He asked Hurry to produce a script from his, Preston’s, notes and to send that to the defendant George Lucas in care of 20th Century Fox Film Corp. in Los Angeles, California, a well-known American firm in the business of producing and distributing films, and apparently the parent of the Canadian corporate defendant in this action. Hurry claims to have been uninterested in working on anyone’s writing but his own but after some badgering by Preston, he did as he had been asked. Hurry’s evidence is that Preston gave him about 25 pages of handwritten notes that were hard to decipher in places and that from the notes he produced the script entitled Space Pets the copy of which, entered in evidence, is headed by that title followed by the words “by Dean Preston Scripted by D. Hurry”. Using his employer’s mail room facilities he put the envelope containing the letter and the script through the stamp machine and left the envelope with outgoing mail to be sent by regular mail to the address provided by Preston. A copy of a covering letter, attached to the copy of the script, is dated October 20, 1978 and Hurry testifies that it, with the script, was sent then or shortly thereafter. The script included among its characters two small furry animal species with primitive human characteristics named Olaks and Ewoks who live on a previously unexplored planet in space. No reply or acknowledgement was received from the addressee and the script was not returned.17
8 Lucasfilm Ltd. and George Lucas were at that time involved in production of the Star Wars trilogy, specifically in planning the second film in that series, The Empire Strikes Back, and George Lucas was also at that time working on the screenplay for another film, Raiders of the Lost Ark, and was the executive producer of yet another film, More American Graffiti. For some years Lucasfilm had a policy and practice to return all unsolicited scripts or materials, other than mail that was deemed to be fan mail, and to isolate George Lucas from reception of all incoming mail. There is no record of the script Space Pets having been received from David Hurry in 1978, or at any other time.18
9 For the third film of the trilogy, Return of the Jedi, active planning began about June or July 1980, production was under way from January 1982 to April or May 1983, and release for distribution to theatres was made May 25, 1983. Small furry animal creatures with certain human characteristics, living on the planet Endor, were featured in the final third of the film. The name for these creatures is not heard in the film but it does appear in the credits at its end which lists among other players some under the heading of Ewoks, the same name as appeared in the Preston-Hurry script Space Pets. These creatures became widely known as Ewoks as a result of the film, at least one television production, and marketing of a variety of merchandise, books and pamphlets, all under the authorization of the defendants.19
10 These circumstances raise a number of issues if the plaintiff is to succeed in his claim based on infringement of copyright. These are:
1) Did George Lucas copy the character of the Ewok or, as was argued at trial, significant other features from the script Space Pets? To conclude that there was copying it is essential to compare the similarities in the script and the film Return of the Jedi, which was the focus of discussion relating to the alleged copying. Of course, to conclude that the script Space Pets was copied it is also necessary to conclude by implication that the script was received by Twentieth Century-Fox at its Los Angeles address and that it found its way to George Lucas or one of his staff and was used without authorization in the film, that is, that the defendant Lucas had access to the script.
2) Can copyright exist in the name Ewok and the description of the Ewok character as depicted in the script? As a general rule, courts have not recognized copyright in a name itself, while recognizing that it may be possible to claim copyright in a name which has sufficient character delineation and is widely known.
3) Was Preston the author of the script Space Pets so that he could claim copyright in it as an artistic work? It is trite law that there can be no copyright in an idea but only in the form given to ideas in artistic works. Thus, determination of this issue depends upon the evidence of the relationship of Preston and Hurry respectively in the production of the script Space Pets.
11 I propose to return to these issues, the evidence and the law relating to them, after setting out more fully the background of this action.23
12 Mr. Preston testified that he had considerable experience in the entertainment world. His experience in relation to writing scripts was more limited. He said he had participated with others, though his contribution was unspecified, in developing the episode scripts for a television film series, The Littlest Hobo, produced mainly in Vancouver in the mid 1960’s. He had participated in production of a script “Sibannac”, and the cover of the copy of that script introduced in evidence described the document as “Screenplay by Clive Lance and Diana Ricardo from an original story by Dean S. Preston. Copyright 1971. Canada - U.S.A. First Draft”. He claimed the Space Pets script here in issue as his, and he had discussed development of a story line with his friend Hurry, and perhaps with Hurry’s wife of the time, a project described by the name “Conception” which was never reduced to script form, or apparently written or finished in any other form.25
13 There were thus two written scripts in evidence, Space Pets and “Sibannac”, in which Preston was involved. The latter script Preston said had been produced by him with Mr. Lance and Ms. Ricardo working under his close and constant supervision and in discussion with him to produce a script that was essentially his. He did agree in cross-examination that there was collaboration in production of the script among the three of them. That script was sent to a number of production companies, unsolicited, and was generally not returned by them and was not acknowledged as having been received by some. It was not otherwise published and was not produced.26
14 In the early 1970’s, after experience in organizing tours for entertainers, mainly in the field of western popular music, and after some touring himself with entertainers, Preston says he developed the concept of a group of small furry animal creatures travelling from place to place with the primary aim of entertaining children in hospitals. In order for this activity to be well perceived he came to consider it essential to popularize the creatures as he imagined them and for this purpose it seemed to him a television program or series, or a film, would be essential. He also had an interest in science fiction, but mainly in introducing what he considered a more human interest and lighter tone than he perceived in the genre of science fiction films of the late 1960’s and early 1970’s. Both of these ideas he discussed with a friend with whom he had worked in production of The Littlest Hobo series in Vancouver. This friend, Carl Chandler, corroborated in a general way these discussions which took place in California in the late 1960’s and in West Virginia where Preston visited with him in 1974. Chandler recalled Preston talking of science fiction films and of little furry creatures, though he did not recall discussion of these creatures visiting children in hospital, and the two differed in their recollections as to which of the two ideas of interest to Preston, science fiction films and furry creatures, was first discussed.27
15 Preston and David Hurry became friends in Vancouver about 1974. They apparently found they were kindred spirits with different but complementary interests in the entertainment world. Hurry, after service in the Canadian Army, had studied fine arts relating primarily to theatre at the University of Calgary before moving to Victoria in 1971. There and subsequently in Vancouver he participated in acting and other work associated with theatrical performances, he wrote a script for a play which he produced in Vancouver, and he continued to work at his own creative writing, largely working at night, in addition to holding a series of employed positions. Hurry claimed status as a professional writer, but he did not claim that his writing had led to publication, aside from one script for which he had been paid but which apparently was not produced, one play that he wrote and produced himself, and a hockey news publication that he had published for a few years in Vancouver.28
16 The testimony of both Preston and Hurry is that in the late summer or early fall of 1978 Preston kept urging Hurry to assist him in producing a script from notes that Preston had written. Hurry was reluctant to do this because of his interest in his own work but he finally agreed to do so and Preston delivered the notes to him. The detailed evidence of the arrangements between them, and their respective contributions to the work finally produced, is not altogether clear. For the moment it is sufficient to note that Preston apparently called Hurry at least twice to see how he was progressing with the script, Hurry put him off by saying he was making some progress when in fact he had not started, and finally, he got to work and produced the script Space Pets. As earlier noted Hurry says he sent this to the defendant George Lucas at an address provided by Preston, i.e., c/o 20th Century Fox Film Corp., 10201 W. Pico Blvd., Los Angeles, California. That is the street address, without a zip code, of the American film producer and distributor. A copy of the letter and the script was also sent to Preston, at that time resident in Alberta. Unlike his earlier involvement in production of the script “Sibannac”, Preston did not discuss the development of the script in any continuing or detailed manner after providing his notes to Hurry and he did not examine the script Space Pets before it was sent by Hurry to Lucas. The original notes prepared by Preston and provided to Hurry were not found in advance of the trial and at trial Hurry stated that he had simply thrown them out with the garbage when he had completed the script.29
17 Hurry’s testimony that he had completed the script in 1978 was generally supported by the recollections of his former wife and two of his children. Though she had never seen the script, his former wife testified she was aware that it was a script for a science fiction fantasy with which her husband had little apparent difficulty. She recalled it because this and another project, “Conceptions”, were the first projects that her husband had ever worked on with someone else in his writing. At least when Mrs. Hurry provided for Preston in 1984 a sworn statement about the matter she knew the name of the script though it is not clear this was the case in 1978. Annette Schultz, the daughter of Mr. and Mrs. Hurry, who was fifteen years of age and living at home in 1978, testified that she recalled, apparently when her mind was refreshed, in particular when Preston asked her to examine the script Space Pets in 1988, that she had first seen it in December of 1978 among papers of her father’s in a box when the family was about to move. In 1983 she had seen the film Return of the Jedi, and when the Ewoks appeared and she was told by her companion that they were Ewoks she remembers having a feeling, mainly of being bored by the creatures, that was familiar to her. She said she had the same feeling when she was given the script by Preston in 1988. She could not recall remembering the name of the script from seeing it in 1978 or any details of it, other than what she had read was typed on legal size paper and referred to “little furry fuzzy creatures” on its first page, which bored her, and she had then put it back in its box. A son of the Hurry’s, thirteen years of age and living at home in 1978, testified he could remember surreptitiously looking through his father’s writings and subsequently telling his playmates of that day about reading of creatures living in trees. He did not refer directly to the script in question, nor did he describe what he had seen in any way that would identify that with the script, and his search of his father’s papers was said to have been through a filing cabinet, not a cardboard filing box in which his sister claimed she had found the script which she now identifies as Space Pets.30
18 Nothing was done by Hurry to follow up his letter to George Lucas when the letter was not acknowledged and the script was not returned. Nor was anything done by Preston to follow up on the matter, at least for some years.31
19 In 1982 Preston was living in Los Angeles for a time and in about May of that year he noticed a car driving in front of his which bore a licence plate with the letters EWOK Preston followed the car and later made a point of meeting its two occupants who were “little people” or dwarfs. He learned from them that they had parts in a movie then under production by the defendant Lucas and that they played roles as Ewoks.32
20 From the time of that meeting until the end of 1982 Preston was busy with a number of initiatives. He had an artist in Los Angeles prepare a logo for him depicting a cowboy holding hands with two little furry creatures with the name Ewoks beneath the three figures. He could not remember the surname of the artist or any details of the arrangements with him, but the logo developed for him, which he approved as depicting the Ewoks described in the script Space Pets, was used to produce letterhead paper, perhaps a hundred or so sheets. Through a friend he could not now locate he had met a couple of business people from the Los Angeles area who appeared taken by his logo and proposed that they would initiate a program of marketing merchandise bearing his Ewok logo. A poster advertising a sale of Ewok items, including T-shirts, caps, Ewok jean jackets and Ewok cowboy boots, with the sale advertised as ending July 23, 1983 was apparently sent to George Lucas in July 1983. At trial a similar poster but advertising a sale ending January 15, 1983 was produced by counsel for the plaintiff, the date of that sale apparently being somewhat to the surprise of both counsel. Mr. Preston’s explanation of the difference in dates was that apparently the businessmen he had met, must have had more than one sale. Yet the names of these persons and the arrangements made with them he could not recall and the goods advertised he had not seen except for some caps and T-shirts, one of which shirts was produced at trial.33
21 In the winter of 1982-83 Preston called Hurry, though his news that he had discovered that Ewoks were being used in a movie did little to rouse Hurry’s interest. In December 1982 Preston applied under the Trade Marks Act of Canada for a registered trade mark for the word “Ewoks”, for use in association with a wide variety of merchandise and services. That application was revised at the request of the Registrar’s office, it was subsequently advertised in January 1985, the application was then opposed by Lucasfilm Ltd. and it was subsequently deemed by the Registrar to have been abandoned in 1986 when the applicant, Preston, did not respond to a request for a reply to the opposition to registration. Thereafter, Lucasfilm Ltd. applied to the Registrar under the Trade Marks Act of Canada for registration of the trade mark “The Ewoks” to be used in association with a wide variety of merchandise and services. That application was granted in 1987.34
22 Meanwhile, more than six months after he had seen the licence plate with the word Ewok in Los Angeles, Preston wrote to “George Lucasfilm Ltd.” at the Lucasfilm address in California, on January 21, 1983 asking simply “could you please return the script outline entitled “Space Pet” that was sent to you back in 1979...”. On behalf of Lucasfilm Ltd., a legal assistant replied to Preston on February 10, 1983 noting “...we have no record of receiving a script outline for SPACE PET which you state you sent to us in 1979. ...there is nothing in our records at all with your name or the title SPACE PET”.35
23 While there was no reference to Ewok in the first letter from Mr. Preston in January, some four months after receiving a reply to that letter, on June 9, 1983, he wrote again to George Lucas, this time making no reference to the script Space Pets but seeking to discuss with Mr. Lucas “the possibility of your support and cooperation with the EWOK EXPRESS. The EWOK EXPRESS is a tour bus full of EWOKS on the road visiting crippled children’s hospitals in major cities of the U.S.A. and Canada. ...” That letter of June 9 was typed on paper to which Preston’s logo, prepared a year before in Los Angeles, was affixed together with what appears as an Ewok, as conceived by Preston’s artist, at the bottom of the page. There was no reply to that letter and Preston wrote a third letter to Mr. Lucas on July 11, again on paper featuring his Ewok letterhead. This letter includes the following:
. . . . .
Please let me show you how to produce the largest talked about road show in this country and bring some happiness to the hearts of disabled children, and then make a million dollars a year!
I do not want to litigate with you, Mr. Lucas, as EWOK is my registered trade mark. The EWOK EXPRESS is also a tax write-off. Instead of giving it to the government, let’s give it to the kids, and then also make a million.
. . . . .
Please find enclosed an EWOK sale poster. Thought you might be interested.
. . . . .
On August 18, lawyers on behalf of Lucasfilm Ltd. responded to Preston suggesting that by his use of the word Ewok and its depiction he was infringing trade mark and copyright interests of Lucasfilm Ltd. and requesting that he cease and desist.38
24 I should note in this chronology that the film Return of the Jedi was released by 20th Century Fox on May 25, 1983 and that it became an immediate box office attraction and must have had substantial publicity and attention.39
25 In March of 1984 Mr. Preston asked David Hurry and his wife to produce letters or statements which would be sworn before a Notary Public about the production of the Space Pets script. This they did, though curiously the letter of David Hurry, sworn, indicates that the script was sent to a film studio in Hollywood in May of 1978, rather than in October of 1978, and it describes the Ewoks developed in the script as being about three feet tall with tufts of fur at the shoulders and elbows. Neither the Ewoks in the script or the Ewoks as they appeared in the Lucas film have these tufts of hair and their height is less than three feet in the script and averaged about four feet in the film.40
26 In January 1985 Mr. Preston initiated this action by filing a statement of claim, a statement that was subsequently amended twice. The original statement of claim includes in its prayer for relief all of the remedies as set out in the later statements, except for the claim for general damages set out in the amended amended statement. In preparation for trial Mr. Preston was examined in discovery on two occasions, in 1986 and 1987, at which times he had not yet seen the movie Return of the Jedi. Indeed he did not see the film, which it is alleged infringes on his copyright, until the summer of 1988.41
27 The testimony of George Lucas traces his successful career, the evolution of the corporate defendant Lucasfilm Ltd., its policy and practice in dealing with unsolicited material, the evolution of the Star Wars trilogy and of some of the animal creatures featured in these films, especially the Wookiee and the Ewok. His first film was produced in 1970, in the following year Lucasfilm Ltd. was established and in 1972 a highly successful film, American Graffiti, was produced. In the early 1970’s Lucas had developed the concept for Star Wars which he discussed with two other major studios, which proved not to be interested, before Twentieth Century-Fox encouraged him to submit a screenplay. The first draft script for the screenplay, then entitled “The Star Wars”, was completed and submitted to Twentieth Century-Fox in May 1974. On the basis of that screenplay arrangements were made for Lucasfilm Ltd. to commence planning for Star Wars. Lucas realized that his original screenplay was too long for a single movie and he began planning for use of the original script as the basis of three films. In the final portion of the original script a society of primitive furry woodland creatures eventually engage in combat with a technologically sophisticated society, essentially evil in its purposes, known as the Empire, and the primitive creatures are victorious. In the first draft, the primitive creatures, once thought of by Lucas as “Jawas”, are called “Wookees”. They were originally conceived by Lucas as resembling bush-babies, but huge and grey with fierce baboon-like fangs. Chewbacca, a Wookiee who is featured in each of the Star Wars movies as a primitive creature adept in mastering highly technological equipment, including space craft, appears in the original script. Lucas, working from the original script, produced the first drafts of the screenplay for the first movie, Star Wars, others worked on later drafts, the film went into production and was released in May of 1977. It was an immediate success at the box office and by 1979 Lucasfilm’s operations were rapidly expanding, not only in the production of film but also in associated merchandising of a wide variety of wares, pamphlets and books associated with the Star Wars films. After release of Star Wars, Lucas and his company began working on the second film in the trilogy, preparation for filming in England and Norway began in January 1979 and the completed film, The Empire Strikes Back, was released in May of 1980. By 1979 Lucasfilm Ltd. had offices at Universal City in Los Angeles, in San Anselmo near San Francisco and in London, England in connection with the production of the Star Wars movies, and filming was done in London and on location elsewhere. Then or shortly thereafter they also developed offices at San Raphael, also near San Francisco, at a ranch that Lucas acquired.42
28 Following release of The Empire Strikes Back, while Lucas was engaged in work on other films, he also began working on the first draft of the script for the third film in the trilogy, filming for which began in early 1982. As we have seen, this was completed and released on May 25, 1983 under the title Return of the Jedi.43
29 In the final third of this film the Ewoks appear and thereafter they play an important role that is entirely consistent with the role for a primitive creature that was originally conceived and included in the original draft script completed by Lucas in 1974. The Ewoks, using primitive weapons, play a major role in assisting to defeat a highly sophisticated technological and evil society, the Empire.44
30 In his testimony Lucas described how, working with artists, his original concept for the Wookiee evolved for the first picture Star Wars. By the end of the second film the leading Wookiee, Chewbacca, had developed considerable sophistication in handling modern technological equipment and so, to be true to his original concept of a primitive society proving victorious over a highly technological society, Lucas decided to develop a second primitive species for Return of the Jedi. Again working with artists, who had substantial freedom to seek to depict from his verbal description of the creatures as he conceived them, the Ewoks evolved into the three dimensional characters that play a significant role in the last third of Return of the Jedi. They are not named in the film, except in the credit lines at the very end, and the word Ewok is not spoken in the film. They obviously became widely and well known as Ewoks through the success of the film and the marketing activities undertaken by or in association with Lucasfilm Ltd.45
31 Lucas’ testimony also included reference to the system of his company in dealing with unsolicited materials. From its earliest days it had a policy of returning any unsolicited mail or materials that were submitted for consideration by Lucas or the company or anyone associated with it. Miss Alsup, who had joined Lucasfilm Ltd. shortly after its formation in 1971, as one of two persons originally involved in the company with Lucas and his wife, and who remained until 1980, testified about her continuing responsibilities through the years of her employment and her practice to return all unsolicited materials, unread except for purposes of identifying its nature, retaining only a copy of her own covering transmittal letter with a copy of any covering letter that might have been received. In 1977 Ms. Jane Bay joined Lucasfilm Ltd. as executive assistant to Mr. Lucas, a position she continued to hold at the time of trial, and she too supported the description of Mr. Lucas and Miss Alsup about company policy and practice in dealing with unsolicited materials. Ms. Bay, who succeeded Miss Alsup in screening all incoming mail addressed to Mr. Lucas, testified that no unsolicited material was ever passed to him, that the only mail that did reach him was through her, and that in her responsibilities for handling mail coming to Lucasfilm Ltd., whether addressed to George Lucas, to his company, or to Twentieth Century-Fox, she and her secretary distributed all incoming mail to the appropriate office for response and she sent all unsolicited materials to Miss Alsup, so long as she was with the company, to be returned. Internal correspondence of Lucasfilm in 1977 and in 1979 laid out the policy to be followed in relation to unsolicited materials and all three witnesses, Lucas, Bay and Alsup testified that these instructions were issued simply to ensure that as the company grew new staff were apprised of what had been company policy and, in the later case, how company policy should be applied to a new circumstance.46
32 Lucasfilm Ltd. went through a period of considerable expansion with the release of the Star Wars films and had several offices. In the period from 1977 to 1983 it moved operations from one office to another. From late 1978, in December, or early 1979, and for periods in the latter year, both Lucas and Miss Alsup spent time in London, England and in Norway in connection with production of the second film in the trilogy. Miss Alsup, whose responsibility it was to handle unsolicited material, made arrangements to have this done while she was absent. At about that time, and clearly after she left the company in 1980, the then new legal department of the company assumed responsibility for dealing with these materials. I have no doubt that all of those responsible at Lucasfilm Ltd. were conscientious in seeking to deal effectively with unsolicited material, in part because this is apparently a major problem for those engaged, as Lucas was, in the film industry. Neither Lucas nor the key witnesses responsible for dealing with unsolicited materials at the relevant time had any recollection of ever seeing the letter dated October 20, 1978 from David Hurry with the script enclosed and no record of its receipt was found in the company records. Miss Alsup said she believed she would remember it if she had seen it because, typed on legal size paper, it was quite unlike other unsolicited material that she dealt with. I conclude that had the letter and script from Hurry been received the script would have been returned in the normal course with a covering letter from Lucasfilm Ltd.47
33 That normal course would occur, unless the letter were received, not dealt with in accord with practice and after receipt were mislaid. On the basis of correspondence made available to the plaintiff by Lucasfilm Ltd. concerning certain fan mail, the Court was invited to conclude that Hurry’s letter and the script Space Pets were received by Lucasfilm. The correspondence referred to was a collection of copies of letters described in a covering memorandum dated June 1, 1979, said to have been found in a fan mail bag apparently mislaid for nearly a year. They were apparently considered “fan mail” and left in a bag to be dealt with, but were overlooked for some time. Some of these letters do contain simple story suggestions for the Star Wars series, some write of ideas for Star Wars films and invite response but do not in any way discuss those ideas, some relate to merchandising and some are primarily fan mail. None of these letters introduced at trial would, in my view, constitute a script or an outline for a script for a film. One of the letters from a then twelve year old Jenny Rothschild enclosed a brief story, in about 220 words, about several of the Star Wars’ characters and included an additional person, a young girl, whose part Ms. Rothschild hoped to play if her story were developed into a film. Ms. Rothschild, now Ms. Rothschild Clements, who testified at the trial, could recall writing the letter in July of 1978, a letter to which she had never had a response. This evidence was offered to invite the Court to conclude, as the plaintiff urged, that whatever the policy of Lucasfilm was for dealing with unsolicited material, its practice did not always ensure such material was returned, if only because in the late 1978 and 1979 period the company was expanding rapidly in its activities and personnel and its success with the first film, Star Wars, led to a significant volume of mail. However, the evidence at trial relating to expansion of its activities, particularly in relation to its various offices, placed most of this as occurring after the beginning of 1979, some months after Hurry’s letter would have been expected to be received in the ordinary course of mail.48
34 Thus, the evidence of access by the defendants to the script Space Pets is not direct, but at best is circumstantial. Access may be inferred in such circumstances where the work complained of as copying is found to contain substantial similarity with a copyright work.49
35 Having traced the general background, I return to the principal issues raised in this case.50
Similarities of the Script and the Film51
36 Two procedural issues arose in relation to assessing whether the defendants in the film Return of the Jedi can be deemed to have copied the script Space Pets, in the sense of reproducing it or any substantial part of it, as would be required to find that infringement had occurred within the meaning of the Copyright Act, now R.S.C. 1985, c.C-42 as amended, ss. 3(1)(d) or (e) and ss. 27(1). (The provisions of the statute then applicable were R.S.C. 1970, c.C-30, ss. 3 and 17(1)).52
37 The first of these issues relates to the scope or range of similarities claimed by the claim of the plaintiff in this case. The second issue concerned the admission of certain expert testimony offered on behalf of the plaintiff, and since this was peripheral to the main issues in the case I deal with it only in the note below.353
Scope of the similarities claimed54
38 In testimony at trial Preston identified the similarities he perceived between the script Space Pets and the film, including the name Ewok, the characteristics including appearance, dress, weapons and habitat of the Ewoks, and certain scenes or special effects relating to them, and the leading human characters in the script. This list was supported and supplemented in some minor detail by expert witnesses called by the plaintiff.55
39 The amended amended statement of claim, filed herein May 3, 1989, includes the following paragraphs. (The underlined words appear in the statement of claim indicating changes from the statement originally filed).
5) At all times material hereto, the Plaintiff was the originally author of a literary work entitled ‘Space Pets’ and the owner of the copyright therein.
6) On or about the 20th day of October A.D. 1978 the Plaintiff delivered the literary work to the Defendants in Los Angeles, California. The said literary work contained two introductory pages being pages 1 and 2 where the main characters were outlined and in particular the Ewoks were created and brought into the literary world with a full description of their nature, characteristics, habitat, clothing, weapons, living arrangements, and way of life in general.
. . . . .
8) While working in Hollywood, California in the year 1982, the Plaintiff became aware that the Defendants had surreptitiously and clandestinely, without the knowledge, consent or authority of the Plaintiff, had set about to use and did use the [word] Ewok in various ways around their motion picture studios in furtherance of their plans to use the ‘Ewok’ creation in motion pictures.
. . . . .
11) At times and places unknown to the Plaintiff in the year 1983, the Defendants infringed the Plaintiff’s said copyright and trade mark by reproducing and authorizing the reproduction of substantial parts of the said literary work in a material form, namely, in a motion picture entitled ‘Return of the Jedi’, and subsequently in a television series entitled ‘Ewok Adventure’, and in various other forms and mediums without the knowledge, consent or authority of the Plaintiff and the Plaintiff has thereby sustained grave and irreparable damage.
40 In cross-examination of the plaintiff Mr. Preston, counsel for the defendants confronted him with testimony given under oath at discovery about the nature of his claim. The transcript from the trial is as follows:
Q. ...Now I am somewhat confused. The evidence that you gave this morning to my friend with respect to the similarities between Space Pets and Return of the Jedi dealt with more than the name Ewok and the two dimensional description of Ewok contained in Space Pets. It dealt with, among other things, the similarities with Lando and Chi Chi, the habitat, the God bikes and the speeder bikes and so on. Now are you saying now to this court that you are claiming more similarities between the Ewok character and the name than in relation to the Ewoks of the movie Return of the Jedi? Are you claiming more similarities than just the Ewok similarity?
Q. I’m going to read a portion of the examination for discovery in connection with that and ask for some direction from Mr. Macdonald and ultimately from the court, My Lord. Turning to page 134 of the examination for discovery which discovery was conducted on June the 27th, 1987. I turn to question commencing on line 6 and I’ll just read these out, Mr. Preston.
Q. Turning to that area Mr. Preston, what do you say Mr. Lucas took from your or the script, the script, Space Pets, that belonged to you that you would have a copyright on?
A. The characters in Space Pets.
Q. Specifically what character?
A. The Ewoks.
Q. All right. In other words, not the plot obviously, but the characters themselves, these Ewoks?
Q. All right. This would then obviously not be the dialogue from Space Pets?
A. No, I don’t think he took any dialogue.
Q. Or the sayings?
A. Or the sayings.
Q. So that if I could sum it up, what you are saying George Lucas did was to make a three dimensional character from your written description of the Ewoks?
Now do you recall being asked those questions and giving those answers?
A. Yes, sir.
Q. Well it appeared that at that time in June of 1987 your claim was based on of plagiarism the character in the name Ewok and it was limited to that; isn’t that what you said in response to my questions?
A. Yes, sir, but remembering I had not seen the movie Return of the Jedi and I had told you that.
Q. Well I appreciate that, Mr. Preston, but I also appreciate that I nor my office have never been notified by either you or your counsel that your claim was to embrace something beyond the word Ewok and the characters in the Ewoks until you actually started to testify to that effect yesterday?
A. Yes, sir.
MR. DUTTON: Well, My Lord, I’m somewhat in a quandary and we may have -- we may be in a position to discuss this in the form of a motion perhaps following the completion of the testimony of Mr. Preston, I wanted to make the court aware through the testimony of Mr. Preston given at the examination for discovery what the position of the plaintiff was until it now apparently has been broadened.
Counsel for the defendants urged that the testimony from discovery, acknowledged and then qualified in cross-examination at trial, be taken by the Court as an admission by the plaintiff limiting the scope of his claim in relation to aspects of the script alleged to have been wrongly used by the defendants.60
41 I am not prepared to so limit the plaintiff’s claim for several reasons. Evidence taken at discovery, though under oath, is not the same as evidence taken at trial though the former may be introduced at trial where testimony of a previously discovered witness differs from that given in discovery. Moreover, the evidence in discovery by the plaintiff, though that of a party, was here given by one who could not be expected to appreciate the implications or possibilities of his testimony being taken as an admission limiting the scope of the claim as set out in the pleadings. Though the amended amended statement of claim was filed following discovery and it does include in the changes introduced in paragraph 6 somewhat fuller reference to the Ewok concept and characteristics said to be developed in the script Space Pets, reference to the word Ewok and the concept of Ewok characteristics listed as key elements of the plaintiff’s claim had been set out earlier in a Reply to Demand for Particulars, and later in Further and Better Particulars, provided on behalf of the plaintiff. Moreover, the amended amended statement of claim was itself filed well in advance of trial. Finally, paragraph 11 of that pleading was substantially unchanged from the original statement of claim and it alleges infringement “by reproducing and authorizing the reproduction of substantial parts of the said literary work [the script]...in a motion picture entitled ‘Return of the Jedi’ and” in other media. While counsel for the defendants may have been concerned to find at trial that the scope of the plaintiff’s claim was not apparently limited to the Ewok as characterized in the script, in this case the defendants were not disadvantaged, in my view, by the plaintiff’s testimony at discovery. In the result, comparison of substantial reproduction from the script is here assessed on the range of similarities as outlined in the evidence at trial on behalf of the plaintiff. I do note here that counsel for the plaintiff did not argue that the alleged infringement was in copying of the plot or the dialogue of the script in the film.61
Ewoks in the cripst Space Pets62
42 Before turning to the evidence about similarities perceived between the script Space Pets and the film Return of the Jedi, it may assist to include those portions of the script which refer to the Ewoks or other matters said to be similar to phases of the film. These include the following descriptive quotations, and other “references” in parentheses, which do not include all dialogue or other text which is not descriptive. Pages are numbered in sequence though they were not numbered in the copy of the script entered in evidence.
PETS (Olaks and Ewoks)
Kellgeehar....Olak befriended by the crew. Cross between a short haired monkey with smooth, light brown hair, and a Koala bear (facialy). Upright and bipedestrian, partialy civilized, dressed in a body armour made from softened tree bark and tightly woven, tough thin vines. The helmet is made from hollowed wood. All Olaks stand a mere three feet tall, although the leader of the Olaks, a grey bearded creature, stands taller because he wears shoes with platform styled soles to signify his position.
Pegmaka......Ewok who comes to recognize the foolishness of the war between the two races and helps put an end to the affair. Ewoks are shorter than the Olaks, also ape like and bipedestrian, but their hair is darker, longer, and they have a face similar to a panda, with large white patches beneath their eyes. Ewoks are more warlike than the Olaks, and they dress in heavier body armour, also of tree bark, with skirt styled lower halves in pieces linked together by tough vines. Their helmets are either wood, or holowed skulls of larger animals.
Geg............Ewok Chieftan. Very old Ewok, his hair is thinning all over, hangs in thin strings, carried everywhere in a kind of sedan chair by four soldiers, dresses same as the others but wears a metal “crown” that will be discovered later to be a part of a missing satellite.
The Olaks and Ewoks have been at war for years, the origin of the war is unknown, it is simply now accepted as a part of their combined daily routine to try and eliminate each other. Their weapons are simple, with the Olaks favouring spears, a small portable catapult similar to the Medi eval earth catapults, and bombs that are lit like molotov cocktails and thrown. The Ewoks use a spinner type weapon thrown by hand and made from round pieces of wood with spikes sticking out around the edge, a large crossbow affair that takes several Ewoks to load and fire, and slings, with which they are very accurate.
Both races live high off the ground in thatched house slung between the monstrous trees on their planet and access to them is by ropes made from vines and knotted for climbing. A series of platforms between the houses are made from tree limbs, bark, and vines, and both races are very agile in their respective worlds.
The two races speak the same basic language, a high, squeaky kind of dialogue, that, when passed through the language interpretor, (Langread) comes out sounding similar to the voices used by David Seville of Chipmonk fame. The “Langread” will enable our heroes to speak to the Olaks and Ewoks and thus give the audience full understanding of the dialogue.
(Reference to the first appearance of an Ewok as “...a shadowy figure, small similar in height to the creature on the hsip (sic)...a small, hairy, heavily armoured creature...”).
(Two references to the speech of the Olak translated for the human principals by “the interpretor (Langread)” as, “Voice is like one of Seville’s Chipmonks” and “voice is still high pitched Chipmonk style”)
Kellgeehar [an Olak says:] “The Ewok is like us but not so. They have much hair, face with big eyes, dark face, not good, fight all the time”.
(Reference to an Ewok net of vines suspended in forest: They [two human principals] skirt the clearing, daring the net to drop, there is an air of tenseness, shadows of the creatures flit through the trees. Build to the climactic moment and suddenly the net drops. Both jump clear as a swarm of the hairy EWOKS rush forward, the two roll into the under brush as the yelling, wooping warlike creatures rush at them waving their spears an [sic] whirling slings over their heads...
(Reference to an Ewok captured by the principal human characters) The EWOK is different from the OLAK as it is darker, hairier, and has a face similar to a Panda bear, the white circles under the eyes making it look wider eyed than it really is.
Scene switches to a kind of primitive village in the trees, strung up high off the ground. We are looking up at the swinging bridge style of connections between thatched huts supported in the crotches of trees. Long vines hang from higher points and we see EWOKS swinging across from one branch to another with them, while the female EWOKS use the bridges PEGMAKA approaches to the bottom of one of the trees and emit a long whistle.
Up high in the tree an EWOK guard hears it and loosens a rope that lowers a thicker vine. PEGMAKA quickly climbs the vine and is taken away by the guard.
Inside the largest of the thatched huts sits GEG, a very old, balding, EWOK, with his body hair thinning out, and on his head a metal “crown”. His body armour is more elaborate than the others, and he is seated in a kind of “sedan” chair with EWOK guards at all four corners.
. . . . .
...we hear a loud yelling in the forest, a beating of loud drums, and see the three ready their weapons, only to sigh in relief as emerging from the edge is a strange parade of EWOK warriors leading the four guards carrying the “sedan” chair with GEG on board.
Large, airy scene, night time, camp fires in a wide open plain, low grass or sand abounds, warriors of both camps arc nervously talking among themselves next to a large thatched hut built on the ground.
The plots of the script and the film65
43 The plot or story line of the script is briefly described in the original statement of claim on behalf of the plaintiff in the following terms:
[The] literary work related to the story of a small exploration party that becomes stranded on a previously unexplored planet where two small furry beings called Olaks and Ewoks arc constantly at war. In time the exploration party puts an end to the war and returns to earth bringing some of the Olaks and Ewoks with them. Thc Olaks and the Ewoks are exploited by the earth people until the exploration team rescues thc Olaks and Ewoks and protects them from further harm.
The “constant war” between the Olaks and Ewoks, though an important background element of the script and referred to in the dialogue, is not otherwise described and aside from one scene neither of these creatures is depicted as using their primitive weapons. In the script there is little character differentiation between the Olaks and the Ewoks, though the latter are described as more warlike, and their roles are basically similar. In testimony about similarities between the script and the film, it was not always clear that the plaintiff’s witnesses distinguished between Olaks and Ewoks when referring to the script.68
44 In Return of the Jedi there is more than one plot or story line. The main theme concerns the continuing contest of good and evil and the principal plot concerns that contest, developed in the first two films, Star Wars and The Empire Strikes Back, between the Empire, seeking to control the universe for its own evil purposes, and the forces of good represented by a multi-creatured universe served in part by humans, including the lead human characters. The main theme is played out at the beginning of the film when Luke Skywalker, the young male representing the epitome of good, rescues his human friends from the court and the clutches of the monster Abba the Hut. The theme is played out in a plot continued from the earlier films in the contest of Luke against the evil Emperor and his principal lieutenant, Darth Vader, Luke’s father, who ultimately turns on and destroys the Emperor in order to save Luke, at the cost of Vader’s own life. The theme is finally played out in the last third of the film when the Ewoks, in support of Luke’s human friends, do battle with primitive weapons and defeat the technologically superior forces of the evil Empire, who have established a base, on the planet inhabited by Ewoks, with a reactor-shield to protect a death star being created by the Empire to control the universe. Unlike the script the film contains no war between two primitive species using primitive weapons. But thanks to the Ewoks and their primitive weapons the human principals in the film destroy the reactor-shield, thus permitting others in the forces of good to destroy the death star, and the Empire.69
45 As I have noted counsel for the plaintiff did not argue that infringement alleged here related to copying of the plot or the dialogue of the script in the film. These aspects of the script and the film are not similar and in my view, a reasonable person in the audience intended for either would not find any substantial similarity in these respects in the two works.70
46 Undoubtedly, a key element in perceived similarities between the two works is the use in each of the coined word Ewok to name a primitive species of small furry creatures with some human qualities. The plaintiff Preston in direct examination described the process through which he had derived the name, and sought to depict this in written form, as set down a day or so before his testimony, in these terms:
Q. With what results? What was the script being used for or why did you have the sinking feeling in your stomach?
A. Well that he had used my name, my creation even -- well, number 1, the name “Ewok”. He had used that name.
Q. This might be appropriate point to ask you how you describe it as your name “Ewok”? How did you conceive or create the name “Ewok”? I’ve shown this to Mr. Dutton and it may be of some assistance to you, about the creative process. With the assistance of that document?
A. Do you want me to --
Q. Don’t want you to read from it. I just want you to refresh your memory from it and tell the court how you came up with the word “Ewok”?
A. In England the Cockney have quite a, have a -- I love the English language with English dialects end accents in England quite often they will drop different letters. Like they drop the letters “H” and if you drop the letter “H” out of “he”, you end up with “E.” And with various song titles that I play with, He Walks Alone, I Walk Alone, if you drop the letter “H” you have got “E” and then if “He Walks”, then you got an “E Walk,” but you may, you don’t pronounce the “L” in “walk,” but then if you take the “L” away from “walk,” then you got “wak” but then that doesn’t phonetically fit back into the song title. So to make it phonetically fit back in, you would put an “O” instead. So you would have an “Ewok”. And I have gone through -- just the two nights ago I wrote this out on how I phonetically -- I call it experimenting with phonetics and how I arrived at all of my various characters. I had to write it out because it is too hard to explain because there is five different, six different spellings of all different words but they all sound exactly the same because of phonetics.
Q. And was that the creative process you used?
A. This is the creative process that I used. He Walks The Line; well you drop the “H”, “E Walks The Line”. That’s how I derived at, by dropping the “H” and dropping the “L”, then you have got “ewak,” “elak,” “olak,” “owok,” “elok,” I’ve got it all written out here for you how I arrived at it.
47 This process as described by Preston does not include any reference to any connection that might be perceived as logical or understandable in relation to particular prior work, or writing or experience, or any basis in reason for starting with the song title “He Walks Alone, I Walk Alone” rather than another song or source in his evolving of the name for one of the primitive species in the script. Perhaps that is how his creative process works. Yet I note that other examples of earlier names he developed, “Willygigan” and “Ignoid”, were names he evolved from the actual names of former schoolmates of an earlier day so that at least for those names he was drawing upon his own previous experience.74
48 The name Ewok is said to have been evolved in the process of Preston’s development of his story line, which ultimately became the script Space Pets, a story which he says jelled in his mind in the years 1975 to 1978 and which led to his writing of his notes for the script in 1978.75
49 George Lucas’ description of his evolution of the word Ewok is in the following terms in his direct examination, with reference to his first use of the name in the first draft script for Return of the Jedi completed February 20, 1980.
Q. Now continuing if I may, Mr. Lucas, you’ve examined the document. You have agreed that this was the first indication of the Ewok with the large yellow eyes and in that script you have actually given that creature the name Ewok, how did that come about?
A. Well it started out I think working with the name Wookiee. It is a moving around the letters of Wookiee. I took the end of Wookiee, the “IE” off Wookiee and put it at the head, like Pig Latin, and then started, when I said it phonetically, it sounded like Ewok which is very similar to Miwok which is the indians that sort of inhabitated the area where I live and where my studio is. Matter of fact, there was a Miwok village just outside my office. So I thought that was a nice, nice sort of reverberation of the idea and eventually took the “I” and one of the “Os” out and it was Ewok.
Q. And the Miwok Indian, how do you spell that?
A. MIWOK, I think.
50 Lucas’ description of his derivation of the name Ewok was tied to his desire to preserve the story line of his original 1974 script, “The Star Wars”, while replacing the name of the primitive species (in that script the “Wookee”) because of the later development of the character of the Wookiee Chewbacca, in the first two films in the trilogy. Lucas’ writing for and producing of films has established his reputation for developing and using odd names that ultimately have widespread appeal. In examination and cross-examination his techniques in this process were discussed. He did not claim that he always developed these names entirely by himself but rather that he recognized sounds that might be used as names and he noted those in a booklet for later possible use. He did testify that he had derived the name Wookiee entirely by himself but when confronted in cross-examination with a story, from another source, of the origin of that name he readily and frankly admitted that he had forgotten that name’s origin and that the story from the other source was true. That admission did not, in my view, take away any significant credibility from his testimony in general. Indeed the story from the other source tended to corroborate Lucas’ own description of his facility in recognizing as potential names for characters, sounds which when first heard had no reference at all to characters.78
51 Lucas denied that he had seen the script Space Pets before commencement of this action. Those from his organization who testified at trial all denied they had ever seen the script Space Pets before this action. In my view all were credible witnesses. They included Ms. Bay and Miss Alsup who had responsibility for receipt and distribution of mail, for screening all mail that went to Lucas and for returning unsolicited materials, unread, and Messrs. Johnston and MacQuarrie, two of the principal artists engaged in production of Return of the Jedi, as they had been in the earlier Star Wars films. All were familiar with Lucasfilm’s practice of returning, unread, unsolicited material and none was aware of situations where that practice had not been followed.79
52 In addition to the name Ewok, Lucas’ creatures had to have their characteristics, habitat and all other features developed for their inclusion in Return of the Jedi. This process he described in direct examination as starting from his original script of 1974 and taking into account the development of the first two films, especially at that stage the highly sophisticated Wookiee, Chewbacca. In the original script the primitive species were likened to the bush-baby, the species lived in the forest of the Garguntuans and some of their primitive weapons were named.80
53 In the evolution of the Ewok for the film George Lucas called upon his artists to develop the concept, based on his 1974 idea of using the bush-baby, a small furry creature with large yellow eyes, as the starting point. Those principally responsible, Messrs. Johnston and MacQuarrie, testified.4 The new being was to be a smaller species than the Wookiee, with short rather than long fur, without fangs, with large yellow eyes, ultimately “cute” but believable in a warlike episode. A decision to use little people or dwarfs to play the role of Ewoks, rather than using puppets or models as had been used in a number of other aspects of the trilogy, led to the height of the Ewoks, averaging about four feet tall - taller than the Ewoks as described in the script Space Pets. It was a costumer’s decision to use leather helmets on the Ewoks, to hide a velcro closing of the costume and headpiece at the neck line. The tree houses of the Ewoks were from a set developed for a Christmas special television program in 1978, a set designed before October 20, 1978, according to Johnston. All of this was explored in considerable detail using copies of the artists’ conceptions of Ewoks as these evolved. The evidence of Lucas and Messrs. Johnston and MacQuarrie was consistent that Lucas gave only the most general description of the species he had in mind when he first met with his artists and that he was interested in the artists’ own creative talents providing a range of possibilities from which Lucas would make some selections. Drawings from three artists who continued to work with Lucas in the evolution of the concept for the film support this by their great differences as the work began. In successive meetings with the artists at which Lucas indicated only which of their drawn concepts should be further explored and which should not, the Ewok as conceived for the film evolved. Further refinements evolved for technical and costuming reasons, and the Ewoks were given a mix of colours of fur in an effort to indicate their individuality as beings. Lucas apparently spent less time and gave less attention to the weapons and habitat of the Ewoks, leaving this more to his creative and technical colleagues, once the basic conception of the Ewok itself was settled. I found this evidence persuasive that the concept of the Ewok developed for and ultimately playing a part in the film arose from the team efforts of Lucas and his creative staff with little specific artistic direction in advance by Lucas.81
54 In this case, in addition to the Ewok as described in the script Space Pets, Preston by his own efforts, prior to release of the film, had an artist prepare a logo depicting Ewoks as he envisaged them. Those in the logo have long hair or fur, they do not have the white patches of panda bears as described in the script, nor do they appear as varied in shades of fur as those in the film, they have no weapons or helmets or armour; they resemble biped teddy bears. This depiction was used by counsel to seek comparisons with Ewoks as they were in the film. In my view, those depicted in the logo differ from those described in the script and differ also from those in the film, though admittedly the creature of the logo, a cartoon character, is not as fully defined as those in the script and those in the film. I note that in cross-examination when asked to compare the Ewok in the logo with those in the film, Lucas acknowledged similarity if even in a general way.82
55 In addition to Preston’s own testimony about similarities as he perceived them, supporting testimony was offered by Hurry and by two expert witnesses. In Hurry’s view the Ewok as depicted in the film was an adaptation from the Olaks and Ewoks of the script. Some testimony of the expert witnesses called on behalf of Preston did not consistently distinguish clearly between the Olaks and the Ewoks of the script when highlighting similarities with the film. Evidence of that sort did not assist the plaintiff’s case of infringement by unauthorized reproduction from the script, at least so far as the reproduction alleged concerned the Ewoks, for the script, while it does not clearly delineate the two species except in some details of appearance, weapons and attitude, has no character that blends the Olaks and Ewoks together.83
56 Testimony of expert witnesses was adduced in support of the plaintiff’s claim from Professor James Dugan, Head of the Department of Drama at the University of Calgary and from Professor Janis E. Svilpis of the Department of English at the same university. Both emphasized similarities they found between the script and the film, and they found these striking. These tended to relate mainly to details of and about the Ewoks and certain scenes rather than to the plots of the script and the film or the roles played by Ewoks in both. When cross-examined about differences between the Ewoks depicted in the script and the film they acknowledged most of these. Each acknowledged also that there was little that was original in the specific details of either the script or the film in the concept and treatment of the Ewoks, their costume, habitat and weapons, that would distinguish either work from other productions or writings concerning primitive creatures both in science fiction and in other literary works. Yet for both experts the accretion of similar details in the film and the script seemed more than mere coincidence. For both the most striking similarity was the use of the name Ewok and both considered it highly improbable or unlikely that the film had been developed without awareness of the script Space Pets.84
57 Evidence of expert witnesses was offered in rebuttal by those called for the defendants, Professor Patricia Demers of the Department of English at the University of Alberta and Professor Joan Rayfield of the Department of Anthropology at York University. Their evidence tended to emphasize differences between the script and the film, qualitative differences in the nature of both works, their plot and dialogue, and their treatment of Ewoks. In the view of both, the coincidence of both Preston and Lucas developing the name Ewok was not highly improbable, for Dr. Demers because of phonotactic principles in the use of sounds for words, for Dr. Rayfield because of typical brief names ending in the letter K for a variety of primitive peoples, including the Miwok Indians with which Lucas was familiar as early inhabitants of northern California. Both also point to a store of conventions and popular notions, including a variety of other stories and films, as background for many of the details of the primitive creatures in both script and film, a background which the expert witnesses on behalf of the plaintiff had acknowledged. Professor Rayfield’s evidence of this was essentially that “It is really not surprising that Lucas, Preston and Hurry drawing from a common pool of folklore, information and misinformation, conventions of science fiction and their own imaginations, should have come up with similar ideas about primitive human-like populations”.85
58 I turn now to my assessment of the specific detailed similarities that were the focus of attention at trial. After carefully considering the evidence adduced, including the testimony at trial, the following summarizes my conclusions about detailed similarities.86
59 First, I dismiss some similarities because they could not be evidence of copying from the script by Lucas, since these appear in Return of the Jedi as a continuing saga in the trilogy after first appearing in Star Wars, released in 1977 before the script Space Pets was written, or in The Empire Strikes Back, planning for which was well under way and for which filming began within a few months of the date of Hurry’s letter accompanying the script. Thus, even though there are differences in their respective roles in the script and the film, it is of no consequence that the script included four human principal characters, one woman and three men, and so did the film (though there were also many other human characters including principals in the film and not in the script). For the same reason the alleged similarity between one human principal in the script (Chi Chi Gomez) and one in the film (Lando Calrissian), is of no consequence, for the latter was first featured in The Empire Strikes Back. Moreover, the role of Lando in relation to the Ewoks is very different in the film, for he is not involved with them in any way until the final scenes, whereas Gomez in the script is involved with them throughout their part in the story.87
60 Some other similarities I tend to discount also, for their presence in the film is traceable to the 1974 original script by Lucas, “The Star Wars”. Thus, the general concept of a primitive species, furry creatures with some human characteristics, living in a forest and with primitive weapons including spears and bows and arrows is traceable to the original script. So is the concept of small one or two rider vehicles, “speeder bikes” in the film, “landspeeders” in the script of 1974, and “God cycles” in the Preston-Hurry script of 1978.88
61 Other similarities prove to be general without allowing for differences in detail provided by the script Space Pets and the film. Thus, the primitive Ewoks are biped, small furry creatures. Yet in the script they are less than three feet tall, long haired, dark, with faces like a panda with large white patches beneath the eyes, and in the film they are three and a half to four or a little more feet tall, short haired and of many hues, some striped, with a face unlike a bear’s, with no white patches beneath their eyes but with large yellow eyes. Their garments in the script include heavy body armour of tree bark with skirt-styled lower halves in pieces linked by tough vines and they wear helmets of wood or hollowed skulls of larger animals. In the film they wear no such armour or skirts, and only three Ewoks are seen with bird or animal head dresses on their heads but all wear leather helmets exposing the ears, designed to hide the velcro fastening of costume and head piece. Their weapons are said to be similar and in the sense of being primitive weapons that is so. In the script the Ewoks use “a spinner type weapon thrown by hand and made from round pieces of wood with spikes sticking out at the edge, a large crossbow affair that takes several Ewoks to load and fire, and slings with which they are very accurate”. They are also depicted in one scene with spears. Only the spears and slings of this group of weapons are used in the film, though a catapult, a weapon used by the Olaks in the script, is used by Ewoks in the film with some other weapons, including a hang-glider, not mentioned in the script. Not among their weapons, but generally similar features which on closer examination are different are the Little God Riders of the script (”small battery powered kiddie cycles” which in testimony Preston described as having wheels) and the “speeder bikes” of the film (two seater, airborne, apparently jet propelled vehicles without wheels).89
62 A sedan chair is used in both the script (for a throne and to transport the Ewok chieftain) and the film (to transport and honour the droid/automaton character C-3PO, deemed by the Ewoks as a special being, and to permit Luke Skywalker to demonstrate his powers of levitation). In the script a vine net trap falls in a forest clearing but does not trap the human explorers who nevertheless are soon surrounded by Ewoks. In the film a vine net trap does fall and traps the exploring party of humans and droids who break free but are soon surrounded by Ewoks. The voices of the Ewoks are said to be similar in script and film. In the script the voice is “high, squeaky...when passed through the language interpretor, (Langread) comes out sounding similar to the voices used by David Seville of Chipmonk fame” which enables the heroes and the audience to understand them. In the film they also have high voices, but only C-3PO can understand them and he translates for others what they have said. Their voices range in pitch and are not otherwise intelligible even as voices akin to those “of Chipmonk fame”. Finally, there is similarity in their forest dwellings, in tree huts joined by platforms or walkways but as earlier noted this scene in the film was from a setting used in 1978, before the date of Hurry’s letter, for filming of a television special program.90
63 Many of the detailed similarities, in my view, can be traced to the common store of folklore about primitive species with human characteristics upon which Lucas was as free to draw as were Preston and Hurry. Yet drawing upon a common store of information does not in itself answer to the claim of infringement. It is the expression of ideas, not the ideas themselves, that is the subject of copyright. It is entirely possible that two or more authors, composers, dramatists or other artists may draw upon a common store of information for ideas and each may have copyright in his or her expression of those ideas. But if while drawing upon the common information base, one should copy the expression in literary or dramatic form of another author copyright may be infringed.91
Conclusion concerning similarities alleged92
64 Under the Copyright Act, copyright is the sole right to produce or reproduce a literary, dramatic, musical or artistic work or any substantial part of it in any form whatever, copyright is vested first in the author of the work, and infringement is deemed when any person without the consent of the owner of the copyright does anything that only the owner has the right to do. (The Act, sections 3(1) and (2), 13(1) and 27(a)).593
65 Here there is no suggestion that the defendants simply reproduced by film the script Space Pets; rather the claim is that without consent of the plaintiff they incorporated a substantial part of the script in Return of the Jedi. Thus the consideration of similarities claimed between the script and the film.94
66 There appears a dearth of Canadian jurisprudence on the test for assessing substantial similarity. Authorities from England and from the United States are helpful for, though the legislation differs in some respects from the Act in Canada, it appears in both cases to be based on similar concepts and principles. Substantial similarity is not to be measured only by the quantity of matter reproduced from a copyrighted work, though that may be a significant factor.6 Of more import may be the quality of matter reproduced. At least in the case of literary or dramatic works assessing similarities may depend upon a number of factors. In the recent Canadian decision, Hutton et al. v. Canadian Broadcasting Corp.7, MacCallum J. refers to the test for substantial similarity developed by the Ninth Circuit, in California, of the United States Court of Appeals8 and by the District Court for the Southern District of New York9 (within the Second Circuit of the U.S. Court of Appeals). Two more recent decisions of each Court provide a current overview of the tests as evolved within these two circuits of the U.S. Court of Appeals.10 From the two step test developed in the Ninth Circuit and from the single step test of the Second Circuit certain factors for assessing substantial similarity are suggested. These factors include plot, themes, dialogue, mood, setting or scenes, pace, sequence and characters, so far as these are within the recognized limits of copyright in the protected work. In assessing these factors, a decision ultimately for the trier of fact, the test is ultimately whether the average lay observer, at least one for whom the work is intended, would recognize the alleged copy as having been appropriated from the copyrighted work.95
67 In my view it is helpful to consider these factors in assessing substantial similarity alleged here in the script and the film. I have already noted that there is no claim to similarity in plot or dialogue, and the previous outlines of the two productions, I believe, clearly indicate no similarity in themes, in mood, pace or sequence. Similarity is claimed in relation to setting or scenes, those involving a net trap of vines, the forest habitat and houses of the Ewoks in both, but it is my view that those scenes in themselves are not subject to copyright or protected by it for they are standard aspects of productions concerning primitive species or primitive humans, drawn from a common pool of folklore.96
68 It is my view, after careful consideration of the similarities alleged, that the average lay observer, the average person in the respective intended audiences would find no substantial similarity in the script and the film. I conclude that, while there are some general similarities in details depicting the Ewoks, there is not substantial similarity between the script Space Pets and the film Return of the Jedi.97
69 This would be sufficient to dispose of any claim that the defendants infringed any right of the plaintiff under subsection 3(1)(d) of the Act but further consideration must be given to the question of whether the Ewok character, as developed in the script Space Pets, is subject to copyright and the author’s right to produce or reproduce that character is protected under subsection 3(1)(d) or (e) of the Act, and if so whether that character was substantially reproduced in the film.1198
The Ewok character in the script: a matter for copyright?99
70 In essence the core of the plaintiff’s argument is that the Ewok and its characteristics as developed in the script was copied without authorization by the defendants.100
71 The name Ewok appears more than forty times in the script Space Pets; as earlier noted it is not heard in the film and it appears only at the end with the printed list of credits to players and others.101
72 While generally there cannot be copyright in a mere name12 where the name identifies a well known character copyright in the name and associated character may be recognized.13 For such recognition it is said the character must be sufficiently clearly delineated in the work subject to copyright that it become widely known and recognized.14 In the words of Learned Hand J.15 “...the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly”.102
73 If we review the character of the Ewok as developed in the script Space Pets we know that Ewoks are described in the following terms:
• they are shorter than Olaks who stand a mere three feet tall;
• like Olaks they are ape like and bipedestrian, apparently with hands;
• their hair is darker and longer than the short haired Olaks who have light brown hair;
• they have a face like a panda, with large white patches beneath their eyes and dark faces;
• they are more warlike than Olaks and dress in heavier armour, of tree bark with skirt styled lower halves in pieces linked by tough vines, and they wear helmets of wood or hollowed skulls of larger animals;
• the Ewok chieftain has thinning hair hanging in long strings, is carried in a sedan chair, and wears a wardrobe like other Ewoks except that he also wears a metal crown;
• they have been at war for years against the Olaks, they use spears, a spinner type weapon thrown by hand and made from round pieces of wood with spikes sticking out around the edge, a large crossbow affair that takes several Ewoks to load and fire, and slings, with which they are very accurate;
• like Olaks, they live high off the ground in thatched houses slung between monstrous trees and access to these is by vines knotted for climbing, the houses are joined by platforms of tree limbs, bark and vines, and like Olaks they are very agile in their habitat;
• they speak the same basic language as the Olaks in a high, squeaky kind of dialogue that, when passed through the language interpreter (Langread) comes out sounding similar to the voices used by David Seville of Chipmonk fame which permits them to be understood by the human characters in the script and by the audience;
• they use a net trap made of vines which drops to trap intended quarry; in the one scene where their weapons are used they yell and “woop”, rushing forward waving spears and whirling slings over their heads; in their habitat they swing by vines from one branch to another, while female Ewoks use the bridges; they beat drums and they use fire; and
• they appear to have many human characteristics, as do the Olaks.
74 In my view the characteristics set out in the script do not delineate the character of the Ewok sufficiently distinctly to warrant recognition as a character subject to copyright. Indeed, it is difficult to distinguish them from the Olaks in the script, in their general dress, their use of primitive weapons, their habitats and their respective roles which are essentially the same. Indeed, as suggested earlier, the plaintiff Preston and experts testifying in support of his case appeared to have difficulty in distinguishing between them in testimony which in part compared both primitive species from the script with Ewoks of the film.105
75 Finally, in this case it cannot be said that the Ewok character as developed in the script is widely known by reason of the script in which Preston claims copyright. From his own evidence, Preston indicates that only he and Hurry would be aware of the contents of the script Space Pets, and aside from the allegations concerning the defendants, only one other person, a friend with whom he spent time in Alberta, was shown the script. He did talk about Ewoks with others, including the little people he encountered in Los Angeles in May 1982, the artist who prepared his logo design, and a friend through whom he made arrangements with two unnamed persons for auction sales of Ewok items of clothing. All of these activities together did not make well known the Ewok character as developed in the script. The process which made an Ewok well known, indeed famous, was the work under supervision of George Lucas and Lucasfilm Ltd. in production of the successful film, Return of the Jedi, and related distribution and promotional activities of the defendants.106
76 In these circumstances, I conclude that the character of the Ewok as developed in the script Space Pets is not in itself subject to copyright.107
Copyright in the script Space Pets108
77 A third issue raised in these proceedings concerns the matter of copyright in the script Space Pets and, as it was put by counsel for the defendants, whether Preston was the author of the script. If he were not the author he could not claim relief for infringement of copyright. It will be recalled that among other relief claimed is a declaration that the plaintiff has copyright in the whole, or in the alternative in pages 1 and 2 of the script, and that copyright has been infringed by the defendants.109
78 The plaintiff relies upon the presumptions set out in section 34(3) of the Copyright Act which provides in essence that in an infringement action the defendant carries the burden of proving that a work is not subject to copyright or that the author of the work is not the owner of the copyright.16110
79 In this case the title of the plaintiff to the copyright was directly put in issue by the defendants. The notes which Preston says he wrote and provided to Hurry were thrown away by the latter and were not available for comparison with the script. The document is described by Hurry differently in its title, in his covering letter and in his sworn statement of 1984. The testimony of Preston and Hurry about the contribution of the latter to the script Space Pets differed somewhat, as did their memories about who originated the oral arrangements for Hurry to share in any proceeds from the script, and their recollections of when Preston first used the word “amanuensis”, a word that was frequently used at trial by both, but apparently with somewhat varying shades of meaning, to describe Hurry’s role in producing the script.111
80 Since, as I have concluded, I find no infringement of copyright interests in the script, no reproducing of the script in any substantial way, in the film Return of the Jedi, there is, in my view no need to resolve this final issue for purposes of this case. The point of the remedy sought by the plaintiff by way of declaration is directed to infringement claimed, not merely to the plaintiff’s rights in the script.112
81 In the circumstances a declaration of the plaintiff’s rights in the script is unnecessary for disposition of the principal issue in this case, and that disposition determines the outcome. Further comment upon a matter unnecessary for disposition of the action is best avoided. Particularly is this so since the plaintiff has acquired under the Act a certificate of registration of copyright, dated December 21, 1989, in the literary work entitled Space Pets, an unpublished work, of which he is registered as the author and the owner.113
82 Thus, I decline to determine the question of copyright in the script of Space Pets, though much evidence and considerable argument was directed to this issue.114
83 The plaintiff has failed to establish on a balance of probabilities that the defendants here produced or reproduced or adapted in substantial part the script Space Pets in the film Return of the Jedi.116
84 For the reasons outlined I find that there is no substantial similarity between the script Space Pets and the film Return of the Jedi, that the character of the Ewok as developed in the script is not a matter protected by copyright, and that the defendants have not infringed any copyright interest of the plaintiff in the script of Space Pets.117
85 At trial testimony concerning alleged copying was directed to the film, considerably assisted by use of booklets derived from the film and authorized by Lucasfilm Ltd. Though none of this ancillary material was itself characterized as infringing on the plaintiff’s claimed copyright interests, the statement of claim herein does refer to “various other forms and mediums”, in addition to the film. My conclusions about the film relate to all materials before the Court which are derived from Return of the Jedi and authorized by the defendants.118
86 An order goes dismissing the action with costs.119
In the pleadings the plaintiff also claims as a basis for relief, in the alternative to the alleged infringement of copyright, that the defendants were in breach of an implied contract by conduct with the plaintiff to negotiate a reasonable fee for the use of the literary work “Space Pets”. This basis was withdrawn by counsel for the plaintiff at the time of the hearing, and no argument was directed to it, apparently in light of the perceived jurisdiction of this Court. Further, the original and amended pleadings also included a claim for “damages for dishonest industrial or commercial usage in Canada pursuant to the Trade Marks Act of Canada”, a claim not pursued at the hearing. In Reasons for Order of Mr. Justice Strayer in an interlocutory proceeding in this matter, dated July 3, 1987, reference is made that “during argument counsel for the plaintiff confirmed that his client was not claiming infringement of any trade mark”. In accordance with this no claim based on the Trade Marks Act was argued at the hearing. The trial thus proceeded as a hearing in relation to the plaintiff’s claims based solely on alleged infringement of copyright.
By Order of Muldoon J. made June 7, 1988, issues of fact arising in relation to the claims for punitive and exemplary damages, for an accounting, for damages for dishonest industrial or commercial usage pursuant to the Trade Marks Act and for interest, were to be the subject of a reference after trial. The Amended Amended Statement of Claim, filed May 3, 1989 added the claim for general damages in the amount of $100 million, but it was later agreed by counsel for the plaintiff, in a pre-trial conference with Jerome A.C.J. held August 15, 1989, that the matter would proceed to trial with a $5 million claim.
Three witnesses were called as experts on behalf of the plaintiff to advise the Court on their assessment of similarities and probabilities and two were offered on behalf of the defendants in rebuttal. Submissions of the qualifications of each were made as they were presented and two witnesses offered by each party were accepted and testified as experts.
I declined ultimately to accept as an expert witness one offered on behalf of the plaintiff after preliminary argument concerning his qualifications and the likely tendency of his testimony. Dr. M. G. Grace holds appointments in departments of the Faculty of Medicine at the University of Alberta, and elsewhere, and he is a consultant. He has had wide involvement as a critic and advisor on a multitude of research projects in a variety of disciplines. His specialized training is in the field of mathematical statistics. Dr. Grace had been asked to consider similarities between the movie and the script and in his report, prepared for trial, he had done so. In cross-examination on his qualifications he agreed that the comparison of a literary work and a film was not a matter within his field of expertise though he did have considerable experience in critiquing advanced research projects in a number of disciplines. Further, he confirmed a conclusion from his prepared report that “it is not possible to evaluate probabilities related to the likelihood of similarities between script and movie because there are no reasonable denominators”. I concluded that, in light of his testimony in relation to his qualifications, he had no particular expertise to bring to the field of comparisons here of concern and that within his own expertise, mathematical statistics, he admittedly had nothing to contribute to resolution of the issues between the parties. In my view, this meant he had nothing to contribute as an expert by way of advice to the Court. At the trial I commended Dr. Grace for his frankness in stating the limitations of his possible contribution, a refreshing approach for someone brought forth to testify as an expert witness, but I declined to accept his testimony as an expert or to admit his report as evidence.
In another respect expert testimony offered on behalf of the plaintiff was not admitted. After examination and cross-examination of the experts heard on behalf of the plaintiff, and of the experts offered in rebuttal on behalf of the defendants counsel for the plaintiff sought to recall one of the expert witnesses earlier heard on behalf of the plaintiff with a view to rebutting the testimony of one of the experts heard on behalf of the defendants. I ruled that such evidence would not be heard and I note the objection of counsel to that ruling the expert witness had already been examined and cross-examined. The written reports of the experts offered on behalf of the defendants had been provided to counsel for the plaintiff in advance of trial so that it could not be said there was any element of surprise in the main thrust of the testimony given by those expert witnesses whom it was now sought to rebut. In my view there were no exceptional circumstances which would warrant a surrebuttal by an expert who had already been examined and cross-examined and in the normal course Federal Court Rule 482 ought not to be construed to permit the surrebuttal here sought. The evidence of experts offered in advice to the Court may be helpful but that advice is essentially related to the main thrust of their testimony as summarized in their written reports if there be such. The task of a court in drawing its conclusions about the issues between the parties is not assisted by expert witnesses being recalled to rebut one another repeatedly.
Counsel for the plaintiff submitted that the Court should draw adverse inferences against the defendants for their decision not to call other witnesses who had been involved in production of the film. I decline to do so for there was no specific evidence referred to known to be in control of the defendants which if produced would have assisted in this case. Moreover, if testimony of others would have assisted the plaintiff, efforts to obtain that were a matter for the plaintiff to undertake on his own behalf.
Copyright Act, R.S.C. 1985, c.C-42 as amended included the following provisions:
See Horn Abbot Ltd. v. W. B. Coulter Sales Ltd. (1984), 77 C.P.R. (2d) 145 (F.C.T.D.) (The “Trivial Pursuit” case).
(1989) 27 C.I.P.R. 12 at 57-60 (Alta. Q.B.), pending appeal.
Bevan v. Columbia Broadcasting System Inc., 329 F.Supp. 601 at 605, 177 U.S.P.Q. 339 (S.D.N.Y., 1971) (The “Hogan’s Heroes” case).
Quare whether subsection 3(1)(e) applies to the circumstance here set out. The issue of alleged copying of the character of the Ewok from the script was argued, but not with reference to the Act or that subsection, which would appear to relate to the character of the work rather than a character in the work.
See Francis Day and Hunter Ltd. v. Twentieth Century Fox Corporation, Ltd. et al.,  4 All E.R. 192 at 197-198 (P.C.); King Features Syndicate Inc. v. Lechter,  Ex. C.R. 297 per Cameron J. at 305-307.
King Features Syndicate Inc. v. Lechter, supra, note (12), where copyright in “Popeye” characters was conceded; Walt Disney Productions v. The Air Pirates et al., 581 F.2d 751 (U.S.C.A., 9th Cir. Cal. 1978) (Disney cartoon creatures copyright).
See Kelly v. Cinema Houses, Ltd.,  Macg. Cop. Cas. 362 at 367-8 (C.A.) where Maugham L.I. suggests, dicta, that no infringement could be found if the character taken from a book or play is devoid of novelty; Warner Bros. Pictures Inc. v. Columbia Broadcasting System Inc., 216 F. 2d 945 at 950 (U.S.C.A., 9th Cir., 1954); Universal City Studios Inc. et al. v. Zellers Inc. (1983), 73 C.P.R. (2d) 1 (F.C.T.D.) where Walsh J. enjoined marketing of “E.T.” dolls which were subject to copyright.
34. (1) Where copyright in any work has been infringed, the owner of the copyright is, subject to this Act, entitled to all remedies by way of injunction, damages, accounts and otherwise that are or may be conferred by law for the infringement of a right.
June 14, 2016
Ariel Katz Research Assistant
University of Toronto, Faculty of Law
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