MEMORANDUM AND ORDER
For the third time, the Court is called upon to adjudicate an aspect of the seemingly never-ending dispute precipitated by the passing of the Lubavitcher Rebbe, Me-nachem Mendel Schneerson (“the Rebbe”). See Merkos L’Inyonei Chinuch, Inc. v. Sharf,
Though perhaps more mundane, the matter before the Court is no less fiercely disputed. At issue is the right to publish the Likkutei Sichos — literally, the “collected talks” given by the Rebbe — and ancillary works. For the following reasons, the Court concludes that there is an issue of fact as to the authorship of one of the works, but that plaintiffs cannot prevent defendants from publishing any of the other works.
I
The history of the Lubavitcher community is summarized in Vaad I,
The Rebbe gave numerous talks (sichos) throughout his lifetime. Many were given on the Sabbath and holidays, when religious doctrine prohibited writing and recording. As a result, some of the Rebbe’s followers would memorize a talk and transcribe it when they were able.
The sichos were initially circulated unedited within the Lubavitcher community. Beginning in the late 1950s, the Rebbe
In 1967, an enterprising volunteer— Rabbi Benzion Shemtov — proposed restructuring the editing and publishing operation. With the Rebbe’s approval, he organized several yeshiva students, including plaintiff Zalman Chanin, into an entity dubbed Vaad L’Hafotzas Sichos (literally, “council for distribution of the sichos ”). Vaad — the other plaintiff in this case — was formally incorporated in 1976. Rabbi Cha-nin, along with Rabbi Nachman Schapiro and Rabbi Sholom Jacobson, has served on Vaad’s board of directors from that time to the present.
All told, thirty-nine volumes of the Lik-kutei Sichos have been published. The title page of each volume clearly lists the Rebbe, with no mention of any co-author or editor. Less clear is the actual publisher of the volumes. The colophon of the first edition, published around 1990, recites that it was “published and copyrighted by” the Kehot Publication Society, an unincorporated division of defendant Merkos L’ln-yonei Chinueh, Inc., the Lubavitcher community’s “center for educational affairs.” Pis.’ Exs. in Supp. of Pis.’ Mot. for Summ. J. (“Pis.’ Exs.”), Ex. 1C. The third edition, published in 1997, was ostensibly “published and copyright by” Vaad. Id., Ex. IB. Moreover, Vaad attests — without apparent contradiction — that Merkos and the community’s umbrella organization, defendant Agudas Chasidei Chabad of the United States, continued to purchase copies of the Likkutei Sichos published by Vaad, even after the Rebbe’s passing.
In 1998, Vaad registered the Likkutei Sichos with the United States Copyright Office. The application listed Vaad as the sole author on the theory that the work was the result of Vaad’s hiring out the “compilation, editing, and translation of lectures.” Decl. of Jonathan A. Auerbach, Ex. 14. The application further recited that the work was created between 1972 and 1998 and first published on April 10, 1998. Id.
The relationship between plaintiffs and defendants eventually soured in many respects. As best the Court can glean, the triggering event for this litigation was the dispute, mentioned above, over the nature of the Rebbe’s departure from this world. In Vaad’s version of the Likkutei Sichos, the Rebbe’s name was followed by shlita
Qn-w'w)
, a Hebrew acronym meaning, roughly, “may he live a good, long life, amen.” Pis.’ Exs., Ex. IB. Vaad attests that after the Rebbe’s passing, the defendants demanded that Vaad replace the phrase with “of blessed memory.”
On November 18, 2011, Vaad and Cha-nin filed suit against Merkos and Agudas, as well as named and unnamed individuals
At the same time plaintiffs filed their complaint, Vaad applied to register - copyrights in six other works:
• Hadronim Al Ha’Shas
• Sefer Ha’Maamorim Meluket/Sefer Ha’Maamorim Bosi L’Gani
• Biurim L’Pirush Rashi Al Ha’Torah
• Biurim L’Pirkei Avos
• Hilchos Beis Habchira Im Chiddush-im Ubiurim
• Hagada Shel Pesach Im Likkutei Taamim, Minhagim Ubiurim
As with the Likkutei Sichos, Vaad claimed to be the work-for-hire author of the six works. It listed initial publication dates ranging from September 1993 (for the Hadronim Al Ha’Shas) to July 2011 (for the Hilchos Beis Habchira). Registrations were thereafter issued between November 30, 2011, and August 21, 2012, after which the Court allowed plaintiffs leave to amend the complaint to add infringement claims based on the additional works.
Defendants now move for summary judgment on all of plaintiffs’ claims. Plaintiffs cross-move for partial summary judgment as to copyright infringement, unfair competition and defendants’ counterclaim.
II
Neither plaintiffs’ response to defendants’ motion for summary judgment nor their own motion for partial summary judgment addresses their claims for unjust enrichment; tortious interference with contracts, business relationships and prospective business relations; enforcement of a rabbinical court ruling; breach of fiduciary duty; or conversion. The Court deems those claims (embodied in the fifth through tenth causes of action of their complaint) abandoned. See Jackson v. Federal Express,
A. Copyright Infringement
“In order to make out a claim of copyright infringementf,] a plaintiff must establish three things: 1) that his work is protected by a valid copyright, 2) that the defendant copied his work, and 3) that the copying was wrongful.” Zalewski v. Cicero Builder Dev., Inc.,
At the outset, it is important to stress that the issue is whether Vaad holds a valid copyright in the Likkutei Sichos or any of the additional works. The plaintiffs devote a substantial part of their briefs to arguing that Merkos did not have a license or other permission to reproduce the work. But if Vaad does not have a copyright in a
Similarly, the plaintiffs argue at length that the Rebbe did not intend to secure any copyright for himself. In the first place, the creation of a copyright is not a matter of intent; it depends, as explained below, on the question of authorship. Moreover, even if the Rebbe’s intent were relevant — to the extent, for example, that he intended to abandon any copyright he may have acquired — it would show only that the work was in the public domain, not that the copyright passed to Vaad. Of course, “ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law,” 17 U.S.C. § 201(d)(1); but Vaad makes no such claim to ownership and there is, in any event, no evidence of a transfer meeting the statutory requisites. See id. § 204(a) (requiring transfer to be evidenced by signed writing).
In sum, the sole issue the Court must decide is whether Vaad has a valid copyright in the Likkutei Sichos or any of the additional works, or more precisely, whether there is a genuine dispute of facts material to that question. First, however, the Court must address the burden of proof.
A registered copyright constitutes “pri-ma facie evidence of the validity of the copyright and of the facts stated in the [registration] certificate,” but only with respect to registrations made “before or within five years after first publication of the work.” 17 U.S.C. § 410(c). “The evi-dentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.” Id.
As a practical matter, a defendant must come forward with evidence that a registered copyright is invalid at the summary judgment stage — regardless of first publication date — because the court may otherwise accord at least some evidentiary weight to registration of an older work. See, e.g., Yurman Design, Inc. v. Golden Treasure Imports, Inc.,
As laid out below, the defendants have offered sufficient undisputed evidence to establish, as a matter of law, that Vaad does not have a copyright in either the Likkutei Sichos or in any of the additional works, save one. With respect to the Lla-gada Shel Pesach, there is a genuine issue of fact as to authorship precluding summary judgment.
1. The Work-for-Hire Doctrine
“Copyright in a work ... vests initially in the author or authors of the work.” 17 U.S.C. § 201. “As a general rule, the author is the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Community for Creative Non-Violence v. Reid,
Nevertheless, corporations and like entities can obtain copyrights through the concept of a “work made for hire,” which the Copyright Act defines as either “a work prepared by an employee within the scope of his or employment,” or one of nine specific types of works “if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” 17 U.S.C. § 101. “In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author ... and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.” 17 U.S.C. § 201(b).
The Supreme Court has cautioned courts not to conflate the two means of creating a work for hire: “[The Copyright Act] plainly creates two distinct ways in which a work can be deemed for hire: one for works prepared by employees, the other for those specially ordered or commissioned works which fall within one of the nine enumerated categories and are the subject of a written agreement.” Reid,
As evidenced by its application for registration, Vaad considers the Likkutei Sic-hos a work made for hire. Since there is no evidence of a signed writing designating it as such, its theory depends on whether the work was created by an employee within the scope of his or employment. In this context, “the term ‘employee’ should be understood in light of the general common law of agency,” id.:
Among the other factors relevant to this inquiry are the skill required; the source of the instrumentalities and tools; the location of the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; the extent of the hired party’s discretion over when and how long to work; the method of payment; the hired party’s role in hiring and paying assistants; whether the work is part of the regular business of the hiring party; whether the hiring party is in business; the provision of employee benefits; and the tax treatment of the hired party.
Id. at 751-52,
As defendants point out, a work-for-hire theory is problematic for Vaad because it could not have been the work-for-hire author of any work before it came into existence. Although Vaad protests that it was a functioning entity prior to its formal incorporation, it still can have no claim to any part of the Likkutei Sichos created before its own creation in 1967. In addition, it is not clear that every individual who worked on the Likkutei Sichos did so as an employee of Vaad under the definition set out in Reid.
There is, however, a more fundamental issue. The work-for-hire doctrine is universally described as an exception to the usual rule of authorship. See id. at 737,
2. Was the Likkutei Sichos authored by an employee of Vaad?
Vaad does not contend that it was the author of the Rebbe’s transcribed sic-
Both compilations and derivative works start with preexisting material. In a compilation, the preexisting material is “selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101. In a derivative work, it is modified in some manner into a “translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” Id.
Both compilations and derivative works can be protected by copyright only if — and only to the extent that — they are original. With respect to compilations, the “principal focus” of the originality inquiry is “whether the selection, coordination, and arrangement are sufficiently original to merit protection.” Feist Publ’ns v. Rural Tel. Serv. Co.,
The originality requirement is not unique to compilations and derivative works; it is the very foundation of copyright protection. See Woods v. Bourne Co.,
Even accepting plaintiffs’ premise that the Likkutei Sichos is either a compilation or a derivative work, their claim of original contribution founders on two shoals. First, plaintiffs lay heavy emphasis on the time, money and effort expended in transforming the transcribed sichos into the
Second, plaintiffs posit that any creative contribution to a work makes the contributor an author of the work, with a copyright at least to the extent of his contribution. This argument fairly states the creativity prong of the test for originality, but completely ignores that “originality [also] requires independent creation.” Feist,
It is true, of course, that a single work can have more than one author. “A ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” See 17 U.S.C. § 101. “The authors of a joint work are coowners of copyright in the work.” Id. § 201(a).
In Childress v. Taylor,
[A] writer frequently works with an editor who makes numerous useful revisions to the first draft, some of which will' consist of additions of copyrightable expression. Both intend their contributions to be merged into inseparable parts of a unitary whole, yet very few editors and even fewer writers would expect the editor to be accorded the status of joint author, enjoying an undivided half interest in the copyright in the published work. Similarly, research assistants may on occasion contribute to an author some protectable expression or merely a sufficiently original selection of factual material as would be entitled to a copyright, yet not be entitled to be regarded as a joint author of the work in which the contributed material appears. What distinguishes the writer-editor relationship and the writer-researcher relationship from the true joint author relationship is the lack of intent of both participants in the venture to regard themselves as joint authors.
Id. at 507. Childress thus confirms that a even a separately copyrightable contribution to a work does not automatically make the contributor an author of the work.
In Thomson v. Larson,
Third, “|j]ust as the parties’ written agreements with each other can constitute evidence of whether the parties considered themselves to be co-authors, so the parties’ agreements with outsiders also can provide insight into co-authorship intent, albeit to a somewhat more attenuated degree.” Id. at 204. Vaad alludes generally to contracts and agreements it made with third parties in carrying out its business. What is missing is any evidence that those contracts represented Vaad to be an author, joint’ or otherwise, of the Likkutei Sichos.
In sum, it is clear that Vaad and those under its aegis made an invaluable contribution to the publication to the Likkutei Sichos. • It is equally clear, however, that their contribution was not of a type giving rise to a copyright in that work. In other words, defendants have conclusively rebutted the presumption of validity that attached to Vaad’s copyright registration for the Likkutei Sichos. Without a valid copyright, Vaad’s claim for infringement of that work must fail.
3. Were any of the additional works authored by an employee of Vaad?
It is undisputed that each of the six additional works registered by Vaad contains portions of the Likkutei Sichos. However, each also involves at least some modification of that work. The question is whether any of those modifications were the original and independent creation of an employee of Vaad. Since it is undisputed that none of the defendants publishes Hadronim Al Ha’Shas, the Court confines its analysis to the other five works.
With respect to the Seforim Ha’Maam-orim — collections of dissertations by the Rebbe — defendants have offered evidence that the works were created by Rabbi Yoel Kahan, assisted by Rabbi David Feldman, acting at the behest of a separate organization, Vaad Hanochos B’Lahak. WTiile Vaad contends that it paid some of the expenses of publishing the volumes, it offers no evidence of its involvement in the creation of their content.
With respect to the Biurim L’Pirush Rashi Al Ha’Torah — a compilation of the Rebbe’s discussions of Torah commentary by Rabbi Shlomo Yitzchaki (known as “Ra-shi”) — and the Biurim L’Pirkei Avos — a compilation of the Rebbe’s discussions of the Pirkei Avos (“Ethics of the Fathers”) — it is undisputed that the works were created by Rabbi Eli Friedman. Similarly, the Hilchos Beis Habchira Im Chiddushim Ubiurim — the Rebbe’s discussions of the digest of Talmudic commentary compiled by Rabbi Menachem Meiri — consisted solely of material edited either by the Rebbe himself or Rabbi Av-raham Baruch Pevsner.
Both Rabbi Friedman and Rabbi Pevs-ner were paid by Vaad. Payment alone, however, is insufficient to establish one of the two relationships that can give rise to a work for hire. As noted, there is no evidence of a signed writing specifically designating the works as commissioned works for hire. With respect to employment, there is no evidence that the relationship between Vaad and either Rabbi Friedman or Rabbi Pevsner was one of employer-employee under any of the criteria set forth in Reid.
Finally, there is the Hagada Shel Pesach. The first part of the work con
The first part of the Hagada Shel Pesach was previously published by the Rebbe himself in 1946, and has apparently not been modified since. Defendants contend that the second part consisted solely of material contained in the Likkutei Sic-hos. Even assuming that to be true, however, anyone who compiled, edited or translated that work in such a way as to create an original compilation or derivative work would, as explained above, be an author of the new work, although he or she would have no copyright in the Likkutei Siehos itself.
According to its registration certificate, the Hagada Shel Pesach was first published in 2003. Thus, registration in 2011 does not create a presumption of validity. However, Rabbi Jacob Leib Altein gave the following account of the creation of the Hagada Shel Pesach at his deposition:
[W]e had to extract those portions [of the siehos ] which were directly connected to the Haggadah .... We had to omit those parts which weren’t directly connected to the Haggadah. So it did involve editorial [decisions].
Pis. Exs., Ex. 30 at 37. This is some evidence that there was a minimal level of independent creativity involved in deciding which excerpts from the Likkutei Siehos to include in the new work. Moreover, Rabbi Altein’s use of “we” implies that he was involved in those creative decisions, and defendants concede that he was a member of Vaad’s editorial staff. However, the evidence is hardly conclusive for purposes of summary judgment.
In sum, there is a genuine issue of fact regarding Vaad’s work-for-hire authorship of the Hagada Shel Pesach. With respect to the other additional works, however, defendants have offered sufficient undisputed evidence to demonstrate that Vaad is not the work-for-hire author.
B. Copyright Cancellation
The defendants claim that Vaad obtained a registered copyright in the Likku-tei Siehos and the additional works by falsely claiming authorship in its registration applications. With respect to the Lukketei Siehos, they seek affirmative relief in the form of cancellation of the registration. But “there is no precedent supporting the use of a claim for fraud on the Copyright Office as an affirmative cause of action.” Kwan v. Schlein,
Fraud on the Copyright Office is, however, recognized as one of the various ways in which a registered copyright can be challenged as a defense to infringement. See Fonar Corp.,
Where, as here, the fraud defense is based on an allegedly false representation of authorship, it serves no practical purpose. If the defendant proves that the plaintiff was not the author, then there can be no infringement; the plaintiffs scienter is irrelevant.
C. Unfair Competition
Plaintiffs contend that Merkos’s publication and sale of its own version of the Likkutei Sichos misleads purchasers into believing Merkos compiled and edited the content of the work and/or had the Rebbe’s approval to publish it. In other words, plaintiffs claim that Merkos is passing off its own version of the Lukketei Sichos as the version published by Vaad, in violation of the Lanham Act, the New York General Business Law and state common-law.
Dastar Corp. v. Twentieth Century Fox Film Corp.,
Under Dastar, then, the law of unfair competition does not allow a claim for false or misleading representations as to the origin of the content of a “communicative product.”
In an attempt to salvage their claim, plaintiffs belatedly argue that their claim is based on a characteristic of the physical volumes of the Likkutei Sichos, namely, their trade dress. Plaintiffs have not, however, offered sufficient evidence (1) that the trade dress used by Vaad has acquired secondary meaning identifying the source of the books, or (2) that the trade dress used by Merkos is likely to cause consumer confusion as to source. To the extent the claim is based on Mer-kos’s use of the “Kehot” logo, the Court has already held that the logo is presumptively owned by Merkos, see Vaad L’Hafotzas Sichos, Inc. v. Kehot Publ’n Soc.,
Ill
Plaintiffs’ claim for infringement regarding the Hagada Shel Pesach shall proceed to trial. In all other respects, the complaint is dismissed. Defendants’ counterclaim is also dismissed.
Plaintiffs have demanded a jury trial. Since they seek damages on their infringement claim, they are entitled to one. See Feltner v. Columbia Pictures Television, Inc.,
SO ORDERED.
Notes
. Vaad I involves registration of a trademark in a logo used on publications circulating in the Lubavitcher community. The Court upheld the decision of the United States Patent and Trademark Office approving registration, and held that issues of fact precluded summary judgment on infringement. See
. Presumably, zekher tzadik livrakha
(HDIl1? ¡7HS IDT)
. Curiously, however, Vaad argues that the Rebbe was not the author, either, because he did not play a role in "fixing” the oral sichos into a reproducible medium by transcribing them. Fixation may be done “by or under the authority of the author.” 17 U.S.C. § 101 (emphasis added). In any event, Vaad's argument once again confuses the abstract issue of who authored the transcribed sichos with the relevant issue of whether Vaad did.
. Although Dastar construed the Lanham Act, "it is well recognized that the standards for Section 43(a) claims of the Lanham Act and unfair competition claims under New York Law are almost indistinguishable.” Tri-Star Pictures, Inc. v. Unger,
. Even if the plaintiffs withdraw their jury demand, the matter cannot reasonably be ready for trial by October 13th, when the bench trial in Vaad I is scheduled to begin. Accordingly, the Court denies the motions to reconsider its prior decision not to consolidate this case with Vaad I.