Vaad L'Hafotzas Sichos, Inc. v. Krinsky
133 F. Supp. 3d 527
E.D.N.Y2015Background
- The dispute concerns who holds copyright in the Likkutei Sichos (collected talks of the Lubavitcher Rebbe) and six ancillary works; Vaad L’Hafotzas Sichos, Inc. (Vaad) registered copyrights claiming work-for-hire ownership; Merkos and Agudas published competing editions.
- The Rebbe delivered oral talks often recorded later by followers; volunteers edited, added footnotes, and the Rebbe reviewed and approved drafts before publication; 39 volumes were produced and title pages credit only the Rebbe.
- Vaad was formed in 1967 (incorporated 1976) to organize editing/publishing; Vaad later registered the Likkutei Sichos (1998) and six other works (registrations issued 2011–2012), claiming they were works made for hire.
- Defendants published a nearly identical 39-volume set after a dispute; Vaad sued for copyright infringement and related claims; defendants counterclaimed to invalidate Vaad’s registrations as procured by fraud.
- Court disposed of many non-copyright claims as abandoned; the central legal question became whether Vaad validly owns copyrights in the Likkutei Sichos and the six other works (work-for-hire / authorship issue).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does Vaad own valid copyright in Likkutei Sichos? | Vaad claims compilation/derivative authorship via editing/publishing and work-for-hire status. | Defendants say Vaad’s contributors lacked independent authorship because the Rebbe revised/approved content; Vaad wasn’t author before 1967. | Vaad’s registration rebutted; no valid copyright in Likkutei Sichos — summary judgment for defendants. |
| Are the six additional works owned by Vaad as works for hire? | Vaad says it commissioned/paid editors and registered the works as works made for hire. | Defendants show specific editors/other organizations created the works; no signed work-for-hire agreements; payment alone insufficient. | For five of six works, Vaad not work-for-hire author — summary judgment for defendants. |
| Is Vaad the work-for-hire author of Hagada Shel Pesach? | Vaad claims editorial selection/transformation of Likkutei Sichos material created an original work. | Defendants dispute independent creativity and authorship by Vaad employees. | Genuine issue of material fact exists as to authorship of Hagada Shel Pesach — claim survives to trial. |
| Do unfair competition / Lanham Act claims survive despite copyright result? | Vaad alleges Merkos misleads buyers about origin; trade dress/confusion claims. | Defendants rely on Dastar: Lanham Act protects origin of tangible goods (publisher), not author of content; no proven secondary meaning or confusion. | Dastar bars content-origin Lanham Act claim; trade-dress claim unsupported; unfair-competition claims dismissed. |
Key Cases Cited
- Community for Creative Non-Violence v. Reid, 490 U.S. 730 (agency test for employee status in work-for-hire inquiries)
- Feist Publ’ns v. Rural Tel. Serv. Co., 499 U.S. 340 (originality requirement, rejects "sweat of the brow")
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Lanham Act protects producer of tangible goods, not author of conveyed content)
- Childress v. Taylor, 945 F.2d 500 (2d Cir.) (joint-authorship intent and contributor expectations)
- Thomson v. Larson, 147 F.3d 195 (2d Cir.) (indicia of joint authorship: decisionmaking, billing/credit, agreements)
- Zalewski v. Cicero Builder Dev., Inc., 754 F.3d 95 (2d Cir.) (elements of copyright infringement claim)
- Fonar Corp. v. Domenick, 105 F.3d 99 (2d Cir.) (challenging presumption of registration by proving fraud or invalidity)
- Woods v. Bourne Co., 60 F.3d 978 (2d Cir.) (originality as the foundation of copyright)
- Matthew Bender & Co. v. West Publ’g Co., 158 F.3d 674 (2d Cir.) (originality standard: independent creation and modicum of creativity)
- Merkos L’Inyonei Chinuch, Inc. v. Sharf, 172 F. Supp. 2d 383 (E.D.N.Y. 2001) (prior litigation in the same community cited for background)
- Vaad L’Hafotzas Sichos, Inc. v. Kehot Publ’n Soc., 935 F. Supp. 2d 595 (E.D.N.Y. 2013) (prior decision on trademark registration and related proceedings)