KAY BERRY, INC., Appellant v. TAYLOR GIFTS, INC.; BANDWAGON, INC.
No. 04-3809
United States Court of Appeals for the Third Circuit
August 30, 2005
McKEE, VAN ANTWERPEN and WEIS, Circuit Judges
PRECEDENTIAL
Opinions of the United States Court of Appeals for the Third Circuit
8-30-2005
Kay Berry Inc v. Taylor Gifts Inc
Precedential or Non-Precedential: Precedential
Docket No. 04-3809
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Recommended Citation
“Kay Berry Inc v. Taylor Gifts Inc” (2005). 2005 Decisions. Paper 578. http://digitalcommons.law.villanova.edu/thirdcircuit_2005/578
UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT
NO. 04-3809
KAY BERRY, INC. Appellant v. TAYLOR GIFTS, INC.; BANDWAGON, INC.
On Appeal from the United States District Court for the Western District of Pennsylvania (Civil No. 03-1305) District Judge: Honorable Donetta W. Ambrose
Argued May 3, 2005
BEFORE: McKEE, VAN ANTWERPEN and WEIS, Circuit Judges
(Filed: August 30, 2005)
Fox, Rothschild, O‘Brien & Frankel, LLP
2000 Market Street
10th Floor
Philadelphia, PA 19103
William L. Stang
Fox, Rothschild, O‘Brien & Frankel, LLP
625 Liberty Avenue
29th Floor
Pittsburgh, PA 15222
Counsel for Appellant
William E. Hilton (Argued)
Gauthier & Connors, LLP
225 Franklin Street
Suite 3300
Boston, MA 02110
John R. McGinley, Jr.
Eckert, Seamans, Cherin & Mellot, LLC
600 Grant Street
44th Floor
Pittsburgh, PA 15219
Counsel for Appellees
VAN ANTWERPEN, Circuit Judge
Before us is an appeal from an order granting summary judgment in favor of the defendant-Appellees on a copyright infringement claim. Appellant Kay Berry, Inc. (“Kay Berry“) claims that Appellees Taylor Gifts, Inc. (“Taylor“) and Bandwagon, Inc. (“Bandwagon“) infringed its copyright on its sculptural work – a garden rock cast with a poem found in the public domain. The United States District Court for the Western District of Pennsylvania granted summary judgment after determining that Kay Berry‘s copyright registration was invalid and that the sculptural work was not entitled to copyright protection. We will reverse.
I. FACTUAL BACKGROUND AND PROCEDURAL HISTORY
Kay Berry designs, manufactures, markets and sells “Garden Accent Rocks,” which it describes as decorative, cement-cast, outdoor sculptures typically resembling rocks or stones, inscribed with writings. On July 7, 1997, Kay Berry applied for a copyright registration for its entire line of Garden Accent Rocks. It provided its Garden Accent Rock Catalog (the “Catalog“) as the document specimen for the registration. The Catalog identified each sculpture by number and featured a description and photograph of each
One of Kay Berry‘s best-selling Garden Accent Rocks is Sculpture No. 646, a rectangular object having a stone-like appearance and a verse inscribed on the face. The verse appears in five lines, inscribed in a right-leaning font with the first letter of each word capitalized:
If Tears Could Build A
Stairway, And Memories
A Lane, I‘d Walk Right Up
To Heaven And Bring
You Home Again
(Appellant App. at 8.)
During 2003, Bandwagon began supplying to Taylor, and Taylor began marketing and selling, a “Memory Stone,” which was similar to Kay Berry‘s Sculpture No. 646. Like Sculpture No. 646, the Memory Stone was a rectangular object with a stone-like appearance featuring the exact same verse that appears on Sculpture No. 646. The Memory Stone‘s verse was also laid out in the same five-line format,
Kay Berry sued Taylor and Bandwagon for copyright infringement and moved for a preliminary injunction prohibiting the Appellees from selling the Memory Stone. On December 8, 2003, a United States Magistrate Judge issued a Report and Recommendation suggesting that the District Court deny Kay Berry‘s motion. The District Court adopted the Magistrate‘s Report and Recommendation, without change, in an order dated February 23, 2004.
At about the same time, on February 6, 2004, Appellees had filed an amended motion for summary judgment on the infringement claim. On August 2, 2004, the Magistrate issued a Report and Recommendation suggesting that the District Court grant the motion. On August 30, 2004, the District Court adopted the Magistrate Judge‘s Report and Recommendation as its own opinion and granted summary judgment in favor of Appellees. This timely appeal followed.
II. JURISDICTION AND STANDARD OF REVIEW
The District Court had jurisdiction pursuant to
III. ANALYSIS
“To establish a claim of copyright infringement, a plaintiff must establish: (1) ownership of a valid copyright; and (2) unauthorized copying of original elements of the plaintiff‘s work.” Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir. 2002). In granting summary judgment in favor of Appellees, the District Court relied on a Report and Recommendation which concluded that: (1) Kay Berry did not have a valid registration over its multiple works because they were not sufficiently related, (2) Sculpture No. 646 contained no copyrightable subject matter, and (3) Sculpture No. 646 embodied an expression that was inseparable from an underlying idea. For the reasons set forth below, we will reverse.
A. Kay Berry‘s Registration
We begin by addressing the validity of Kay Berry‘s copyright registration. According to
1. Group Registration
Initially, Kay Berry argued that its Garden Accent Rocks were properly registered as a group of related works pursuant to
The Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and
registration, and the nature of the copies or phonorecords to be deposited in the various classes specified. The regulations may require or permit, for particular classes . . . a single registration for a group of related works.
Although we agree that § 408(c) represents a liberalization of the copyright laws, it does not define the requirements for a valid copyright registration. The applicable subsection states only that “[t]he regulations may require or permit, for particular classes . . . a single registration for a group of related works.
“It is elementary that the meaning of a statute must, in the first instance, be sought in the language in which the act is framed, and if that is plain, and if the law is within the constitutional authority of the law-making body which passed
The Register of Copyrights has exercised the authority delegated by § 408(c)(1) by promulgating rules allowing for group registration for “automated databases,” “related serials,” “daily newspapers,” “contributions to periodicals,” “daily newsletters,” and “published photographs.” See
2. Single Work Registration
Kay Berry alternatively contends that its copyright registration is valid as a “single work” under
“Single Work” registration is separate and distinct from “Group Registration.” The group registration provisions
The single work registration regulation is distinct from the group registration regulation and has different qualifying requirements. The single work registration regulation is silent on whether the individual, self-contained elements of the “single work” be “related” in order to be registered. Instead, single work registration requires, in the case of published works, that all of the self-contained works be “included in a single unit of publication” and share the same copyright claimant.
In Benham Jewelry, 45 U.S.P.Q.2d at 1087-88, the District Court confused the requirements for single work
In addition to confusing the regulatory provisions, Benham Jewelry conducted an analysis that combined the requirements of group registration and single work registration. The court concluded that the jewelry was sufficiently “related” both because it was “marketed as a single line” and shared the same “basic design” and had other visual elements in common. Id. at 1088. Because it improperly melded the “single unit of publication” requirement of single work registration and the “relatedness” requirement of group registration, Benham Jewelry concluded that the “single unit of publication” requirement was superfluous where the works at issue were sufficiently related. Id. This conclusion is incorrect because relatedness is not a requirement for single work registration. As we have shown, the single work registration regulation arises from a different statutory provision than the group work registration regulation and, as a result, we cannot ignore the single unit of publication requirement as did Benham Jewelry.
In Donald Bruce & Co. v. B.N. Multi Com Corp., 964 F. Supp. 265, 268-69 (N.D. Ill. 1997), the court made a similar analytical error. In that case, the court said that the group registration provision for “single registration for a group of related works” was at issue rather than the provision for a single work. Id. at 268. However, during its discussion of the relatedness requirement of group registration, the court in Donald Bruce considered whether including otherwise unrelated works in a “single unit of publication” might satisfy the relatedness requirement for group registration. In other words, the court suggested that including items in a single unit of publication might serve as a proxy for relatedness. This would improperly melded the group registration and single work registration requirements.
Both Benham Jewelry and Donald Bruce fail to account for the fundamental distinction between single work registration under
On remand, the District Court will need to determine in the first instance whether this presents a barrier to Kay Berry‘s registration. Although the issue is not before us on appeal, we note that decisions of this Court and others counsel that registration of a collective work is sufficient to support an action for infringement of the underlying self-contained parts. Educ. Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986) (“Although compilations or ‘collective’ works may include uncopyrightable works, as well as previously copyrighted works, the fact that the registration was for compilations does not preclude protection for the material therein contributed by the author.“); see also Xoom, Inc., 323 F.3d at 284 (owner of copyright in the collective work and underlying works was the same and therefore could maintain an action for infringement of the underlying works); Streetwise Maps v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998) (where the copyright owners are
B. Sculpture No. 646 is entitled to Copyright Protection
Next, the District Court concluded that Sculpture No. 646 lacked any protectible configuration or design. We disagree.
“To qualify for copyright protection, a work must be original to the author . . . mean[ing] only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.” Feist Publ‘ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (internal citations omitted). A sculptural work‘s creativity derives from the combination of texture, color, size, and shape, as well as the particular verse inscribed and the way the verse is presented. It means nothing that these elements may not be individually entitled to protection; “all creative works draw on the common wellspring that is the public domain. In this pool are not only elemental ‘raw materials,’ like colors, letters, descriptive facts, and the catalogue of standard geometric forms, but also earlier works of art that, due to the passage of time or for other reasons, are no longer copyright protected.” Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 132 (2d Cir. 2003). When an author combines these elements and adds his or her own imaginative spark, creation occurs, and the author is entitled to protection for the
Here, Kay Berry claims that it selected an inspirational poem from the public domain, adapted that poem to make it visually and rhythmically appealing, and then cast it on its own sculptural work. For these reasons, as well as those set forth above, we conclude that this quantum of creativity is sufficient to qualify for copyright protection. See Feist Publ‘ns., 499 U.S. at 348; Reader‘s Digest Ass‘n, 821 F.2d at 806.
C. Kay Berry‘s Copyright Registration Does Not Extend to an Idea
We next turn our attention to the second part of the infringement inquiry – whether Appellees improperly copied Sculpture No. 646, and specifically, whether the expression Kay Berry seeks to protect has merged with an unprotectible idea. Copying refers to the act of infringing any of the exclusive rights that accrue to the owner of a valid copyright,
“Substantial similarity,” in turn, is further broken down into two considerations: “(1) whether the defendant copied from the plaintiff‘s work and (2) whether the copying, if proven, went so far as to constitute an improper appropriation.” Atari, Inc. v. North American Philips Consumer Elecs. Corp., 672 F.2d 607, 614 (7th Cir. 1982), superceded in part by
“Not all copying, however, is copyright infringement.” Feist Publ‘ns, 499 U.S. at 361. Even if actual copying is proven, “the fact-finder must decide without the aid of expert testimony, but with the perspective of the ‘lay observer,’ whether the copying was ‘illicit,’ or ‘an unlawful appropriation’ of the copyrighted work.” Whelan Assocs., 797 F.2d at 1232. The focus in this second step is “whether the substantial similarities relate to protectible material.” Dam Things from Denmark, 290 F.3d at 562. “Phrased in an alternative fashion, it must be shown that copying went so far as to constitute improper appropriation, the test being the response of the ordinary lay person.” Universal Athletic Sales Co. v. Salkeld, 511 F.2d 904, 907 (3d Cir. 1975) (citing Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946)). Part of this inquiry involves distinguishing between the author‘s expression and the idea or theme that he or she seeks to convey or explore.
It is a fundamental premise of copyright law that an author can protect only the expression of an idea, but not the idea itself. See
Nearly every work involves a blend of idea and expression. Because an author can only demonstrate substantial similarity by referencing those aspects of his work that embody his creative contribution, he will have a more difficult time proving infringement if his work contains only a minimal amount of original expression. Universal Athletic Sales, 511 F.2d at 908 (“[B]etween the extremes of conceded creativity and independent efforts amounting to no more than the trivial, the test of appropriation necessarily varies.“). As one court has explained:
[A] copyright on a work which bears practically a photographic likeness to the natural article . . . is likely to prove a relatively weak copyright. This is not to say that, as a matter of law, infringement of such a copyright cannot be inferred from mere similarity of appearance, but only that the plaintiff‘s burden will be that much more difficult to sustain because of the intrinsic similarities of the copyrighted and accused works.
First Am. Artificial Flowers, Inc. v. Joseph Markovits, Inc., 342 F. Supp. 178, 186 (S.D.N.Y. 1972). The First Circuit has endorsed this view, explaining that when there is only a limited number of ways to express an idea “the burden of proof is heavy on the plaintiff who may have to show ‘near identity’ between the works at issue.” Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-07 (1st Cir. 1988) (citing Sid & Marty Krofft Television v. McDonald‘s Corp., 562 F.2d 1157, 1167 (9th Cir. 1977)).
In some instances, there may come a point when an author‘s expression becomes indistinguishable from the idea he seeks to convey, such that the two merge. Educ. Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir. 1986). In these circumstances, no protection is available for the expression; otherwise, the copyright owner could effectively acquire a monopoly on the underlying art or the idea itself. Id. Merger is rare, however, and is generally found in works with a utilitarian function, id. (citing Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C. Cir. 1947); M.M. Bus. Forms Corp. v. Uarco, 472 F.2d 1137 (6th Cir. 1973)). This Court has never found an instance in which a completely aesthetic expression merged into an idea. For instance, in Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 666 (3d Cir. 1990), this Court dealt with a case in which the plaintiff sued the defendant for infringing its copyright on humorous nose masks designed to resemble the noses, snouts, and beaks of different animals. Although the issue of substantial similarity was not before the Court, we recognized that “copyrights protect only expressions of ideas and not ideas themselves,” and explained:
By holding that Masquerade‘s nose masks are copyrightable, we do not intimate that it has the exclusive right to make nose masks representing pig, elephant and parrot noses. On remand, it will be Masquerade‘s burden to show that Unique‘s nose masks incorporate copies, in the copyright law sense,
of Masquerade‘s sculptures, rather than sculptures that derive their similarity to Masquerade‘s sculptures merely from the commonality of the animal subjects both represent.
Masquerade Novelty, 912 F.2d at 671-72 (internal citation omitted).
Here, as in Masquerade Novelty, the protectible originality of the allegedly infringed work is to be found, if at all, solely in its appearance. Kay Berry claims that Appellees infringed its copyright not by using the same public domain poem, or inscribing a rock with text, but by copying the specific combination of elements it employed to give Sculpture No. 646 its unique look. Although the evidentiary burden upon it is high, for the reasons we have discussed, we conclude that Kay Berry is entitled to the opportunity to demonstrate that the Memory Stone is neither a unique creation, nor the unavoidable expression of a common idea, but rather an impermissible copy of Sculpture No. 646. We will therefore reverse and remand to the District Court.