BY:Neil J. Rosini, Michael I. Rudell
(Originally published in the Entertainment Law column of the New York Law Journal, December 28, 2007)
If Charles Darwin were alive today and made a list of all the animals he could find in the Galapagos Islands, would that list be protected by copyright in the U.S.? The answer is no. But what if Darwin listed of all the animals in the Galapagos Islands that he considered to be attractive in appearance? Yes, that list would be subject to copyright protection — but only if the quality of being attractive isn’t obvious to everyone.
Regardless of the time, effort, and money Mr. Darwin expended on either list, copyright only protects compilations of information based on subjective judgments. Any compiler who attempts to be exhaustive — and therefore purely objective in his or her selection of elements — will get no benefit from copyright, no matter how brazen the copier. This is the lesson of Southern District Judge John F. Keenan’s recent decision in Stuart Y. Silverstein v. Penguin Putnam, Inc., which pertained to a collection of poems.
The Penguin Putnam Case
In early 1994, while leafing through an old issue of “Life” magazine, plaintiff Silverstein encountered some poems by Dorothy Parker, the famous writer, literary lioness and member of the Algonquin Round Table. Silverstein determined that the poems had never been published in a collection and after searching through more issues of “Life” and finding more previously uncollected Parker poems, he decided to compile as complete a collection of them as he could. Searching “page by page and issue by issue” in twelve libraries, he combed through periodicals in which Parker’s work might have appeared. His research took approximately two years.
Silverstein then submitted his manuscript of 122 poems to defendant Penguin where there already were discussions about publishing a complete collection of Parker’s verse. Penguin offered Silverstein $2,000 — which he declined — to assemble a volume of all of Parker’s poems that would absorb his compilation. Instead, he submitted his book to Scribner, which published the book in 1996 under the title Not Much Fun: The Lost Poems of Dorothy Parker. The hardcover edition bore a copyright notice in the name of Silverstein as the owner of the compilation; the copyrights in Parker’s poems generally were owned by the NAACP, which apparently cooperated with Silverstein.
In 1999, Penguin published its volume of the complete poems of Dorothy Parker. It contained the poems published in Silverstein’s collection, which Penguin’s editor took from a copy of Not Much Fun by cutting and pasting into the Penguin manuscript. Penguin not only failed to ask Silverstein’s permission, but also failed to attribute Silverstein’s work to him because “it did not wish to direct its audience to the competition” and the poems were Parker’s, not Silverstein’s. Moreover, Penguin asserted that in its book the poems were “faithfully reproduced from Dorothy Parker’s original collections” and culled solely from a group of named periodicals, without mention of Silverstein’s book.
Silverstein sued, alleging copyright infringement and claims under the Lanham Act and New York state law. In April, 2003, following a hearing, Judge Keenan entered summary judgment in Silverstein’s favor and enjoined Penguin from selling or distributing its book. On appeal, however, the Second Circuit vacated the judgment and injunction and remanded the case for trial, questioning whether Silverstein exercised sufficient creativity in the selection of the poems for copyright protection to attach.
This time Silverstein lost.
Silverstein’s Selection Process
According to Judge Keenan’s recent decision, Silverstein’s selection process took three steps. He first determined whether or not a writing he found that Parker may have written was a poem or verse. If it was a poem or verse, Silverstein would next determine whether Dorothy Parker wrote it, which was not always made obvious by the by-line. Third, he would determine whether the poem or verse previously had been published in a collection. Silverstein claimed that the first two steps entailed creative decision-making, which conferred copyright protection upon his compilation.
The Court disagreed. Silverstein’s first determination — whether a work was poem or verse — was found to be a “fairly obvious decision” based on a “structural definition” that focused on standard characteristics of poems. For example, poems were “typically published in lines and stanzas, often indented from the margins and set off from any surrounding text.” Also, a poem “sometimes possesses rhyme and meter, though this is not necessary” and a poem “is typically free from the usual rules of grammar, punctuation and capitalization.” Prose, unlike poems, shares none of these tendencies.
Observing that “poetry consist[s] of poems, but not all poems are poetry,” the Court distinguished the obvious exercise of labeling a poem from the creative act of identifying poetry. Whether or not a poem is poetry depends on subjective judgment “that is informed by and depends upon an individual’s personal background, education, taste and judgment,” as Penguin’s expert put it. Silverstein, in contrast, merely “classified as poems those Parker works that fit the typical structure of a poem, described above, just as anyone else would,” said the Court.
The Court also disagreed with Silverstein’s contention that determining Dorothy Parker’s authorship “was a highly subjective process” without objective criteria. The fact that Silverstein excluded from his collection three poems that he determined were not written by Dorothy Parker did not impress the Court. In one instance, Silverstein omitted a poem because he had no proof that the accompanying pseudonym was ever used by Parker. In a second instance, he left out a poem because Parker denied writing it (even though Parker was “known to lie”). In a third instance, Silverstein excluded a poem because there was no “categorical documentary evidence” linking it to Parker. The Court found that Silverstein’s use of historical evidence to make these decisions was neither creative nor subjective.
In entering judgment for Penguin, the Court emphasized that the net result of Silverstein’s efforts was a compilation of all uncollected Parker poems that he knew to exist without subjective preference or any “special subjective definition of a ‘poem.'” In one description of his own work, Silverstein referred to it as the “full inventory” of Dorothy Parker’s uncollected poetry, just as the book itself purported to be. The Court concluded that Silverstein “was guided only by the principle of all-inclusiveness” in compiling his book, which made the selection of poems unprotectable by copyright. Said the Court, “The copyright laws serve their goal of promoting science and art by according protection, not for the author’s labor alone, but to creative expression produced by that labor. The Court’s finding that Not Much Fun lacks creativity compels the conclusion that it is not entitled to copyright protection.”
(The Court also rejected Silverstein’s reverse passing off claim because Penguin did not misrepresent itself to be the source of its own collection; it rejected his state law claims for unfair and immoral trade practices and unfair competition because they were “disguised copyright claims” preempted by the Copyright Act; and it rejected his false promotion claim because it was not pleaded in his complaint and came too late.)
Authors, like Silverstein, who esteem the creative dimension of their contribution to a compilation, likely will be surprised by the law’s low regard for their efforts and want to know what level of creativity is needed to earn copyright protection. Even though the dividing line between the protectable and the unprotectable is not always a bright one,2 it is helpful to look at examples.
In CDN Inc. v. Kapes,3 the Ninth Circuit found the spark of creativity in individual estimates of the present values of collectable coins in a wholesale price guide. The validations were held to reflect the plaintiff’s “considerable expertise and judgment to determine how a multitude of variable factors impact upon available bid and ask price data,” all resulting in a “best estimate” with “no set formula or rule [being used] to generate prices.” The plaintiff’s creative valuations included extrapolations in the absence of reported types and grades and took into account the impact of extrinsic factors like public auctions and the effect of the economy. Further, in using information from third parties, the plaintiff assessed the value of each source, retaining only the most “accurate and important” information.
And in CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc.,4 the Second Circuit held that a compilation of predictions of future used car values deserved copyright protection. The court found that the values were not historical market prices or averages, or derived through mathematical formulas, but rather reflected the authors’ professional judgment based on data from a wide variety of informational sources. Moreover, the selection and arrangement of the predicted values reflected originality through its references to region, selection of optional features, adjustment for mileage by 5,000 mile increments, use of the “abstract concept of the ‘average’ vehicle,” and more.
In both the CDN and CCC cases, the key difference from Silverstein was the exercise of subjective judgment by the compiler that a court could identify. The process of selection did not appear to be what “anyone else” might do.
No matter what the level of expertise of a compiler — be it Darwin or Silverstein — and no matter what the elements being compiled — coins, car values, poems or tortoises — if the compiler’s expertise is not channeled into subjective judgments that create a select — not comprehensive — collection of elements, the compilation will not be protected by copyright.
1 01 Civ. 309 (JFK), S.D.N.Y, November 6, 2007.
2 See, Nimmer on Copyright, §3.04[B].
3 197 F.3d 1256 (9th Cir. 1999).
4 44 F.3d 61 (2d Cir. 1994), cert. denied, 516 U.S. 817 (1995).