[G.R. No. 108946.

January 28, 1999]

FRANCISCO G. JOAQUIN, JR., and BJ PRODUCTIONS, INC., petitioners,

vs. FRANKLIN DRILON GABRIEL ZOSA, WILLIAM ESPOSO, FELIPE
MEDINA, JR., and CASEY FRANCISCO, respondents.

DECISION
MENDOZA, J.:

This is a petition for certiorari. Petitioners seek to annul the resolution of the Department of Justice, dated
August 12, 1992, in Criminal Case No. Q-92-27854, entitled Gabriel Zosa, et al. v. City Prosecutor of Quezon
City and Francisco Joaquin, Jr., and its resolution, dated December 3, 1992, denying petitioner Joaquins motion
for reconsideration.
Petitioner BJ Productions, Inc. (BJPI) is the holder/grantee of Certificate of Copyright No. M922, dated
January 28, 1971, of Rhoda and Me, a dating game show aired from 1970 to 1977.
On June 28, 1973, petitioner BJPI submitted to the National Library an addendum to its certificate of
copyright specifying the shows format and style of presentation.
On July 14, 1991, while watching television, petitioner Francisco Joaquin, Jr., president of BJPI, saw on
RPN Channel 9 an episode of Its a Date, which was produced by IXL Productions, Inc. (IXL). On July 18,
1991, he wrote a letter to private respondent Gabriel M. Zosa, president and general manager of IXL, informing
Zosa that BJPI had a copyright to Rhoda and Meand demanding that IXL discontinue airing Its a Date.
In a letter, dated July 19, 1991, private respondent Zosa apologized to petitioner Joaquin and requested a
meeting to discuss a possible settlement. IXL, however, continued airing Its a Date, prompting petitioner
Joaquin to send a second letter on July 25, 1991 in which he reiterated his demand and warned that, if IXL did
not comply, he would endorse the matter to his attorneys for proper legal action.
Meanwhile, private respondent Zosa sought to register IXLs copyright to the first episode of Its a Date for
which it was issued by the National Library a certificate of copyright on August 14, 1991.
Upon complaint of petitioners, an information for violation of P.D. No. 49 was filed against private
respondent Zosa together with certain officers of RPN Channel 9, namely, William Esposo, Felipe Medina, and
Casey Francisco, in the Regional Trial Court of Quezon City where it was docketed as Criminal Case No. 92-
27854 and assigned to Branch 104 thereof. However, private respondent Zosa sought a review of the resolution
of the Assistant City Prosecutor before the Department of Justice.
On August 12, 1992, respondent Secretary of Justice Franklin M. Drilon reversed the Assistant City
Prosecutors findings and directed him to move for the dismissal of the case against private respondents. [1]
Petitioner Joaquin filed a motion for reconsideration, but his motion was denied by respondent Secretary of
Justice on December 3, 1992. Hence, this petition. Petitioners contend that:
1. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he invoked non-
presentation of the master tape as being fatal to the existence of probable cause to prove infringement,
despite the fact that private respondents never raised the same as a controverted issue.
 2. The public respondent gravely abused his discretion amounting to lack of jurisdiction when he arrogated unto
himself the determination of what is copyrightable - an issue which is exclusively within the jurisdiction of
the regional trial court to assess in a proper proceeding.
Both public and private respondents maintain that petitioners failed to establish the existence of probable
cause due to their failure to present the copyrighted master videotape of Rhoda and Me. They contend that
petitioner BJPIs copyright covers only a specific episode of Rhoda and Me and that the formats or concepts of
dating game shows are not covered by copyright protection under P. D. No. 49.

Non-Assignment of Error

Petitioners claim that their failure to submit the copyrighted master videotape of the television show Rhoda
and Me was not raised in issue by private respondents during the preliminary investigation and, therefore, it was
error for the Secretary of Justice to reverse the investigating prosecutors finding of probable cause on this
ground.
A preliminary investigation falls under the authority of the state prosecutor who is given by law the power
to direct and control criminal actions.[2] He is, however, subject to the control of the Secretary of Justice. Thus,
Rule 112, 4 of the Revised Rules of Criminal Procedure, provides:

SEC.4.Dutyofinvestigatingfiscal.Iftheinvestigatingfiscalfindscausetoholdthe
respondentfortrial,heshallpreparetheresolutionandcorrespondinginformation.Heshall
certifyunderoaththathe,orasshownbytherecord,anauthorizedofficer,haspersonally
examinedthecomplainantandhiswitnesses,thatthereisreasonablegroundtobelievethata
crimehasbeencommittedandthattheaccusedisprobablyguiltythereof,thattheaccused
wasinformedofthecomplaintandoftheevidencesubmittedagainsthimandthathewas
givenanopportunitytosubmitcontrovertingevidence.Otherwise,heshallrecommend
dismissalofthecomplaint.

Ineithercase,heshallforwardtherecordsofthecasetotheprovincialorcityfiscalor
chiefstateprosecutorwithinfive(5)daysfromhisresolution.Thelattershalltake
appropriateactionthereonwithinten(10)daysfromreceiptthereof,immediatelyinforming
thepartiesofsaidaction.

Nocomplaintorinformationmaybefiledordismissedbyaninvestigatingfiscalwithout
thepriorwrittenauthorityorapprovaloftheprovincialorcityfiscalorchiefstate
prosecutor.

Wheretheinvestigatingassistantfiscalrecommendsthedismissalofthecasebuthis
findingsarereversedbytheprovincialorcityfiscalorchiefstateprosecutorontheground
thataprobablecauseexists,thelattermay,byhimself,filethecorrespondinginformation
againsttherespondentordirectanyotherassistantfiscalorstateprosecutortodoso,without
conductinganotherpreliminaryinvestigation.

Ifuponpetitionbyaproperparty,theSecretaryofJusticereversestheresolutionofthe
provincialorcityfiscalorchiefstateprosecutor,heshalldirectthefiscalconcernedtofile
 thecorrespondinginformationwithoutconductinganotherpreliminaryinvestigationorto
dismissormovefordismissalofthecomplaintorinformation.

In reviewing resolutions of prosecutors, the Secretary of Justice is not precluded from considering errors,
although unassigned, for the purpose of determining whether there is probable cause for filing cases in court. He
must make his own finding of probable cause and is not confined to the issues raised by the parties during
preliminary investigation. Moreover, his findings are not subject to review unless shown to have been made
with grave abuse.

Opinion of the Secretary of Justice

Petitioners contend, however, that the determination of the question whether the format or mechanics of a
show is entitled to copyright protection is for the court, and not the Secretary of Justice, to make. They assail the
following portion of the resolution of the respondent Secretary of Justice:

[T]heessenceofcopyrightinfringementisthecopying,inwholeorinpart,ofcopyrightable
materialsasdefinedandenumeratedinSection2ofPD.No.49.Apartfromthemannerin
whichitisactuallyexpressed,however,theideaofadatinggameshowis,intheopinionof
thisOffice,anoncopyrightablematerial.Ideas,concepts,formats,orschemesintheirabstract
formclearlydonotfallwithintheclassofworksormaterialssusceptibleofcopyright
registrationasprovidedinPD.No.49.[3](Emphasisadded.)

It is indeed true that the question whether the format or mechanics of petitioners television show is entitled
to copyright protection is a legal question for the court to make. This does not, however, preclude respondent
Secretary of Justice from making a preliminary determination of this question in resolving whether there is
probable cause for filing the case in court. In doing so in this case, he did not commit any grave error.

Presentation of Master Tape

Petitioners claim that respondent Secretary of Justice gravely abused his discretion in ruling that the master
videotape should have been presented in order to determine whether there was probable cause for copyright
infringement. They contend that 20thCentury Fox Film Corporation v. Court of Appeals,[4] on which respondent
Secretary of Justice relied in reversing the resolution of the investigating prosecutor, is inapplicable to the case
at bar because in the present case, the parties presented sufficient evidence which clearly establish linkages
between the copyrighted show Rhoda and Me and the infringing TV show Its a Date.[5]
The case of 20th Century Fox Film Corporation involved raids conducted on various videotape outlets
allegedly selling or renting out pirated videotapes. The trial court found that the affidavits of NBI agents, given
in support of the application for the search warrant, were insufficient without the master tape. Accordingly, the
trial court lifted the search warrants it had previously issued against the defendants. On petition for review, this
Court sustained the action of the trial court and ruled:[6]

Thepresentationofthemastertapesofthecopyrightedfilmsfromwhichthepiratedfilmswere
allegedlycopied,wasnecessaryforthevalidityofsearchwarrantsagainstthosewhohaveintheir
possessionthepiratedfilms.Thepetitionersargumenttotheeffectthatthepresentationofthe
mastertapesatthetimeofapplicationmaynotbenecessaryasthesewouldbemerelyevidentiary
innatureandnotdeterminativeofwhetherornotaprobablecauseexiststojustifytheissuanceof
thesearchwarrantsisnotmeritorious.Thecourtcannotpresumethatduplicateorcopiedtapes
werenecessarilyreproducedfrommastertapesthatitowns.

Theapplicationforsearchwarrantswasdirectedagainstvideotapeoutletswhichallegedlywere
engagedintheunauthorizedsaleandrentingoutofcopyrightedfilmsbelongingtothepetitioner
pursuanttoP.D.49.

Theessenceofacopyrightinfringementisthesimilarityoratleastsubstantialsimilarityofthe
purportedpiratedworkstothecopyrightedwork.Hence,theapplicantmustpresenttothecourtthe
copyrightedfilmstocomparethemwiththepurchasedevidenceofthevideotapesallegedlypirated
todeterminewhetherthelatterisanunauthorizedreproductionoftheformer.Thislinkageofthe
copyrightedfilmstothepiratedfilmsmustbeestablishedtosatisfytherequirementsofprobable
cause.Mereallegationsastotheexistenceofthecopyrightedfilmscannotserveasbasisforthe
issuanceofasearchwarrant.

This ruling was qualified in the later case of Columbia Pictures, Inc. v. Court of Appeals[7] in which it was held:

Infine,thesupposedpronunciamentoinsaidcaseregardingthenecessityforthepresentationof
themastertapesofthecopyrightedfilmsforthevalidityofsearchwarrantsshouldatmostbe
understoodtomerelyserveasaguidepostindeterminingtheexistenceofprobablecausein
copyrightinfringementcaseswherethereisdoubtastothetruenexusbetweenthemastertapeand
thepiratedcopies.Anobjectiveandcarefulreadingofthedecisioninsaidcasecouldleadtono
otherconclusionthanthatsaiddirectivewashardlyintendedtobeasweepingandinflexible
requirementinallorsimilarcopyrightinfringementcases.... [8]

In the case at bar, during the preliminary investigation, petitioners and private respondents presented
written descriptions of the formats of their respective televisions shows, on the basis of which the investigating
prosecutor ruled:

Asmay[be]gleanedfromtheevidenceonrecord,thesubstanceofthetelevisionproductions
complainantsRHODAANDMEandZosasITSADATEisthattwomatchesaremadebetweena
maleandafemale,bothsingle,andthetwocouplesaretreatedtoanightortwoofdiningand/or
dancingattheexpenseoftheshow.Themajorconceptsofbothshowsisthesame.Anydifference
appearmerevariationsofthemajorconcepts.

ThatthereisaninfringementonthecopyrightoftheshowRHODAANDMEbothincontentand
intheexecutionofthevideopresentationareestablishedbecauserespondentsITSADATEis
practicallyanexactcopyofcomplainantsRHODAANDMEbecauseofsubstantialsimilaritiesas
follows,towit:

RHODAANDMEITSADATE

SetISetI

a.Unmarriedparticipanta.same
 ofonegender(searcher)appearsononesideofadivider,whilethree(3)unmarriedparticipants
oftheothergenderareontheothersideofthedivider.Thisarrangementisdonetoensure
thatthesearcherdoesnotseethesearchees.

b.Searcherasksaquestionb.same
tobeansweredbyeachofthesearchees.The
purposeistodeterminewhoamongthe
searcheesisthemostcompatiblewiththe
searcher.

c.Searcherspeculatesonthec.same

matchtothesearchee.

d.Selectionismadebythed.Selectionis

useofcompute(sic)methods,basedonthe
orbythewayquestionsareanswerofthe
answered,orsimilarmethods.Searchees.

Set2Set2

Sameasabovewiththegenderssame

ofthesearcherandsearcheesinterchanged.
[9]

Petitioners assert that the format of Rhoda and Me is a product of ingenuity and skill and is thus entitled to
copyright protection. It is their position that the presentation of a point-by-point comparison of the formats of
the two shows clearly demonstrates the nexus between the shows and hence establishes the existence of
probable cause for copyright infringement. Such being the case, they did not have to produce the master tape.
To begin with, the format of a show is not copyrightable. Section 2 of P.D. No. 49, [10] otherwise known as
the DECREE ON INTELLECTUAL PROPERTY, enumerates the classes of work entitled to copyright
protection, to wit:

Section2.TherightsgrantedbythisDecreeshall,fromthemomentofcreation,subsistwith
respecttoanyofthefollowingclassesofworks:

(A)Books,includingcompositeandcyclopedicworks,manuscripts,directories,andgazetteers;

(B)Periodicals,includingpamphletsandnewspapers;

(C)Lectures,sermons,addresses,dissertationspreparedfororaldelivery;

(D)Letters;
(E)Dramaticordramaticomusicalcompositions;choreographicworksandentertainmentsindumb
shows,theactingformofwhichisfixedinwritingorotherwise;

(F)Musicalcompositions,withorwithoutwords;

(G)Worksofdrawing,painting,architecture,sculpture,engraving,lithography,andotherworksof
art;modelsordesignsforworksofart;

(H)Reproductionsofaworkofart;

(I)Originalornamentaldesignsormodelsforarticlesofmanufacture,whetherornotpatentable,
andotherworksofappliedart;

(J)Maps,plans,sketches,andcharts;

(K)Drawingsorplasticworksofascientificortechnicalcharacter;

(L)Photographicworksandworksproducedbyaprocessanalogoustophotography;lanternslides;

(M)Cinematographicworksandworksproducedbyaprocessanalogoustocinematographyorany
processformakingaudiovisualrecordings;

(N)Computerprograms;

(O)Prints,pictorialillustrationsadvertisingcopies,labels,tags,andboxwraps;

(P)Dramatizations,translations,adaptations,abridgements,arrangementsandotheralterationsof
literary,musicalorartisticworksorofworksofthePhilippinegovernmentashereindefined,
whichshallbeprotectedasprovidedinSection8ofthisDecree.

(Q)Collectionsofliterary,scholarly,orartisticworksorofworksreferredtoinSection9ofthis
Decreewhichbyreasonoftheselectionandarrangementoftheircontentsconstituteintellectual
creations,thesametobeprotectedassuchinaccordancewithSection8ofthisDecree.

(R)Otherliterary,scholarly,scientificandartisticworks.

This provision is substantially the same as 172 of the INTELLECTUAL PROPERTY CODE OF THE
PHILIPPINES (R.A. No. 8293).[11] The format or mechanics of a television show is not included in the list of
protected works in 2 of P.D. No. 49. For this reason, the protection afforded by the law cannot be extended to
cover them.

Copyright,inthestrictsenseoftheterm,ispurelyastatutoryright.Itisaneworindependentright
grantedbythestatute,andnotsimplyapreexistingrightregulatedbythestatute.Beingastatutory
grant,therightsareonlysuchasthestatuteconfers,andmaybeobtainedandenjoyedonlywith
respecttothesubjectsandbythepersons,andontermsandconditionsspecifiedinthestatute. [12]
Since...copyrightinpublishedworksispurelyastatutorycreation,acopyrightmaybeobtained
onlyforaworkfallingwithinthestatutoryenumerationordescription. [13]

Regardlessofthehistoricalviewpoint,itisauthoritativelysettledintheUnitedStatesthatthereis
nocopyrightexceptthatwhichisbothcreatedandsecuredbyactofCongress....[14]

P.D. No. 49, 2, in enumerating what are subject to copyright, refers to finished works and not to
concepts. The copyright does not extend to an idea, procedure, process, system, method of operation, concept,
principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in
such work.[15] Thus, the new INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES provides:

Sec.175.UnprotectedSubjectMatter.NotwithstandingtheprovisionsofSections172and173,
noprotectionshallextend,underthislaw,toanyidea,procedure,system,methodoroperation,
concept,principle,discoveryormeredataassuch,eveniftheyareexpressed,explained,illustrated
orembodiedinawork;newsofthedayandothermiscellaneousfactshavingthecharacterofmere
itemsofpressinformation;oranyofficialtextofalegislative,administrativeorlegalnature,as
wellasanyofficialtranslationthereof.

What then is the subject matter of petitioners copyright? This Court is of the opinion that petitioner BJPIs
copyright covers audio-visual recordings of each episode of Rhoda and Me, as falling within the class of works
mentioned in P.D. 49, 2(M), to wit:

Cinematographicworksandworksproducedbyaprocessanalogoustocinematographyorany
processformakingaudiovisualrecordings;

The copyright does not extend to the general concept or format of its dating game show. Accordingly, by the
very nature of the subject of petitioner BJPIs copyright, the investigating prosecutor should have the
opportunity to compare the videotapes of the two shows.
Mere description by words of the general format of the two dating game shows is insufficient; the
presentation of the master videotape in evidence was indispensable to the determination of the existence of
probable cause. As aptly observed by respondent Secretary of Justice:

Atelevisionshowincludesmorethanmerewordscandescribebecauseitinvolvesawhole
spectrumofvisualsandeffects,videoandaudio,suchthatnosimilarityordissimilaritymaybe
foundbymerelydescribingthegeneralcopyright/formatofbothdatinggameshows. [16]

WHEREFORE, the petition is hereby DISMISSED.

SO ORDERED.
 SECOND DIVISION

[ G. R. No. 76193, November 09, 1989 ]

UNITED FEATURE SYNDICATE, INC., PETITIONER, VS. MUNSINGWEAR

CREATION MANUFACTURING COMPANY, RESPONDENT.

DECISION

PARAS, J.:
This is a petition for review on certiorari filed by United Feature Syndicate, Inc.,
seeking to set aside the Resolution of the Seventh Division of the Court of Appeal [*]s
dated September 16, 1986 dismissing the appeal of petitioner-appellant for having been
filed out of time and denying its Motion for Reconsideration for lack of merit in its
Resolution dated October 14, 1986.
The Resolution dismissing the appeal, reads as follows:
"We agree wit the Philippine Patent Office and respondent-appellee that the decision of
the aforementioned office dated October 2, 1984 had already become final and
executory at the time the Notice of Appeal was filed.
"Our reason for this conclusion are borne out by the following facts:
"a) On October 2, 1984, the decision sought to be appealed was rendered by the
Philippine Patent Office and a copy thereof was received by counsel for petitioner-
appellant on October 3, 1984 not October 9, 1984 as stated in Notice of Appeal. There
can be no doubt about the decision having been received by petitioner-appellant's
counsel on October 3, 1984 for this is clearly written in the Notice of Decision (p.61,
Original Record), and in point of fact the date of receipt cannot be October 9, 1984, as
declared in the Notice of Appeal (p. 1, Rollo), because in the motion for reconsideration
subsequently file petitioner-appellant it was stated that a copy of the decision was
received on October 4, 1987 (p. 80, Original Record).
"b) On October 18, 1984 as shown in the stamp mark of the Philippine Patent Office (p.
80, Original Record) or on the 15th and last day either for appealing or for moving for
reconsideration, petitioner-appellant filed a motion for reconsideration.
"Sadly and unexplainably for a veteran law office, said motion did not contain or
incorporate a notice of hearing.
"c) Possibly realizing the fatal defect in its motion for reconsideration, petitioner-
appellant subsequently filed a motion for set for hearing its motion for reconsideration.
This was done, however, only on October 31, 1984 (p.162, Original Record).
"The motion for reconsideration filed on the last day, fatally failing as it did to contain a
notice of hearing, sail pleading did not interrupt the period for appealing, for the
motion was noting but a piece of scrap paper (Agricultural and Industrial Marketing,
Inc. v. Court of Appeals, 118 SCRA [1982] 492; Republic Planters Bank v.
Intermediate Appellate Court, 13 SCRA [1984] 631).
"This deadly and moral deficiency in the motion for reconsideration, therefore, resulted
in the decision of the Philippine Patent Office being final and executory on October 19,
1984, the day after the motion for reconsideration was filed, said motion having been
filed on the 15th and last day of appealing.
"WHEREFORE, the motion of respondent appellee is hereby granted and the appeal
dismissed.
"SO ORDERED." (Rollo, pp. 42-43)
This case arose from a petition filed by petitioner for the cancellation of the resignation
of trademark CHARLIE BROWN (Regitration No. SR. 4224) in the name of respondent
MUNSINGWEAR in Inter Partes Case No. 1350 entitiled "United Feature Syndicate,
Inc. v. Munsingwear Creation Mfg. Co.," with the Philippine Patent Office alleging that
petitioner is damaged by the registration of the trademark CHARLIE BROWN of T-
Shirts under Class 25 with the Registration No. SR-4224 dated September 12, 1979 in
the name of Munsingwear Creation Manufacturing Co., Inc., on the following grounds:
(1) that respondent was not entitled to the registration of the mark CHARLIE BROWN
& DEVICE at the time of application for registration; (2) that CHARLIE BROWN is a
character creation or a pictorial illustration, the copyright to which is exclusively owned
worldwide by the petitioner; (3) that as the owner of the pictorial illustration CHARLIE
BROWN, petitioner has since 1950 and continuously up to the present, used and
reproduced the same to the execution of others; (4) that the respondent-registrant has
no bona fide use of the trademark in commerce in the Philippines prior to its
application for registration. (Petition, p. 2, Rollo, p. 8)
On October 2, 1984 the Director of the Philippine Patent Office rendered a decision in
this case holding that a copyright registration like that of the name and likeness of
CHARLIE BROWN may not provide a cause of action for the cancellation of a
trademark registration. (Petition, p. 4; Rollo, p. 10)
Petitioner filed a motion for reconsideration of the decision rendered by the Philippine
Patent Office which was denied by the Director of said office on the ground that the
Decision No. 84-83 was already final and executory. (Petition, Rollo, opp. 11-12)
From this decision, petitioner-appellant appealed to the Court of Appeals and
respondent court its resolution dated September 16, 1986 denied the appeal. While the
Motion for Reconsideration was filed on time, that is, on the last day within which to
appeal, still it is mere scrap of paper because there was no date of hearing stated
therein.
Subsequently, peittioner-appellant filed a motion for reconsideration which public
respondent denied for lack of merit (Annex "B", Rollo, p. 45).
Hence this petition for review on certiorari.
In the resolution on April 6, 1987, the petition was given due course.
In its petition (Rollo, p. 10) and in its memorandum ( Rollo, p. 97), petitioner-appellant
raised the following legal issues:
I
WHETHER THE RESPONDENT COURT OF APPEALS ACTED IN EXCESS OF
JURISDICTION AND/OR COMMITTED GRAVE ABUSE OF DISCRETION WHEN IT
BASED ITS RESOLUTION IN DISMISSING ITS APPEAL ON STRICT TECHNICAL
RULES OF PROCEDURE AS ENUNCIATED IN RULE 15 OF THE RULES OF COURT
INSTEAD OF RELYING ON THE POLICY OF THE PHILIPPINE PATENT OFFICE AS
STRESSED IN RULE 169, AS AMENDED, OF THE RULES OF PRACTICE IN
TRADEMARK CASES.
II
WHETHER THE RESPONDENT COURT OF APPEALS COMMITTED GRAVE ABUSE
OF DISCRETION AMOUNTING TO EXCESS OF JURISDICTION WHEN BY
DISMISSING THE APPEAL TO IT FROM THE DECISION OF THE DIRECTOR OF
PATENTS, IT KNOWINGLY DISREGARDED ITS OWN DECISION IN AC-GR. SP. NO.
0342, WHICH WAS AFFIRMED BY THIS HONORABLE SUPREME COURT TO THE
EFFECT THAT A COPYRIGHTED CHARACTER MAY NOT BE APPROPRIATED AS A
TRADEMARK BY ANOTHER UNDER PRESIDENTIAL DECREE NO. 49.
III
WHETHER, ASSUMING ARGUENDO, BUT ONLY ASSUMING, THAT THE
DECISION OF THE DIRECTOR OF PATENTS IN THE CASE AT BAR HAD ALREADY
BECOME FINAL WHEN IT WAS APPEALED TO THE COURT OF APPEALS, THE
LATTER, BY APPEALED FROM WAS RENDERED, SHOULD HAVE HARMONIZED
THE DECISION WITH LAW, THE DEMANDS OF JUSTICE AND EQUITY.
The petition is impressed with merit.
Petitioner's contention that the purpose of a notice of hearing to the adverse party is to
afford him an opportunity to resist the motion, more particularly the motion for
reconsideration filed by its company is well taken. Said purpose was served when
Musingwear filed its opposition thereto on November 20, 1984 and cured the technical
defect of lack of notice of hearing complained of (Rollo, p. 52). Otherwise stated such
shortcomings of petitioner as to compliance with procedural requirements in taking its
appeal cannot be deemed sufficient to deprive it of a chance to secure a review by this
court in order to obtain substantial justice; more so where liberality accorded to the
petitioner becomes compelling because of the ostensible merit of petitioner's case
(Olango v. Court of First Instance of Misamis Oriental, 121 SCRA 338 [1983]).
Moreover, in Siguenza v. Court of Appeals, (137 SCRA 570 [1985]) the Court stressed
that the right to appeal should not be lightly disregarded by a stringent application of
rules of procedure especially where the appeal is on its face meritorious and the
interest of substantial justice would be served by permitting the appeal.
"An appeal is an essential part of our judicial system. We have advised the courts to
proceed with caution so as not to deprive a part of the right to appeal. (National
Waterworks and Sewerage Authority v. Municipal of Libmanan, 97 SCRA 138) and
instructed that every party-litigant should be afforded the amplest opportunity for the
proper and just disposition of his cause, freed from the constraints of technicalities.
(A-One Feeds, Inc. v. Court of Appeals, 100 SCRA 590).
"The rules of procedure are not to be applied in a very rigid and technical sense. The
rules of procedure are used only to help secure not override substantial justice.
(Gregorio v. Court of Appeals, 72 SCRA 120), therefore, we ruled in Republic v. Court
of Appeals, 72 SCRA 120), therefore, we ruled in Republic v. Court of Appeals (83
SCRA 453) that a six day delay in the perfection of t he appeal does not warrant its
dismissal. And again in Ramos v. Bagaso, 96 SCRA 395, this Court held that the delay
of four (4) days in filling a notice of appeal and a motion for extension of time to file a
record on appeal can be excused on the basis of equity."
It was further emphasized that we allowed the filling of an appeal in some cases where
a stringent application of the rules would have denied it, or when to do so would serve
the demands of substantial justice and in the exercise of our equity
jurisdiction (Serrano v. Court of Appeals, 139 SCRA 179 [1985]).
In the case at bar, the petitioner's delay in filing their record on appeal should not be
strictly construed as to deprive them of the right to appeal especially since on its face
the appeal appears to be impressed with merit. (Italics supplied). All aforementioned
cases are cited in G.R. No. 76595, Pacific Asia Overseas Shipping Corporation v.
NLRC, et al., May 6, 1988.
Procedural technicality should not prevail over substantive rights of a party to appeal
(NEA v. CA, 126 SCRA 394).
Moreover, a judgment of the Court of Appeals that become final by reason of the
mistake of the herein petitioner's lawyer may still be reviewed on appeal by the
Supreme Court particularly where the Supreme Court already gave due course to the
petition for review (Ernesto v. Court of Appeals, 116 SCRA 755 [1982]).
Where strong considerations of substantial justice are manifest in the petition, this
Court may relax the stringent application of technical rules in the exercise of equity
jurisdiction. In addition to the basic merits of the main case, such petition usually
embodies justifying circumstances which warrant our heeding the petitioner's cry for
justice, inspite of the earlier negligence of counsel (Serrano v. Court of Appeals, et
al., 139 SCRA 179 [1985]).
In a number of cases, this Court in the exercise of equity jurisdiction decided to
disregard technicalities in order to resolve the case on its merits based on the evidence
(St. Peter Memorial Park Inc., et al. v. Cleofas, 121 SCRA 287 [1983]; Helmuth, Jr. v.
People of the Philippines, 112 SCRA 573 [1983]).
This case brought before this Court for the resolution of the dismissal of appeal filed by
petitioner-appellant from the decision of the Director of the Philippines Patent Office
for being filed out of time. The normal action to take thereafter, would be to remand
this case to the Court of Appeals for further proceedings. However, in line with
jurisprudence, such time consuming procedure may be properly dispensed with to
resolve the issue (Quisumbing v. Court of Appeals, 122 SCRA 709 [1983]) where there
is enough basis to end the basic controversy between the parties here and now. In this
case at bar dispensing with such procedural steps would not anyway affect substantially
the merits of their respective claims as held in Velasco v. Court of Appeals, (95
SCRA621 [1980] cited in Ortigas & Co. Ltd. v. Ruiz, 148 SCRA [1987]) hence the need
for this Court to broaden its inquiry in this case and decide the same on the merits
rather than merely resolve the procedural question raised (Dorado v. Court of Appeals,
153 SCRA 420 [1987]; De Lima v. Laguna Tayabas Co., 160 SCRA 70 [1988]).
Petitioner contends that it will be damaged by the registration of the trademark
CHAELIE BROWN & DEVICE in favor of private respondent and that it has a better
right to CHARLIE BROWN appeared in periodicals having worldwide distribution and
covered by copyright registration in its name which antedates the certificate of
registration of respondent issued only on September 12, 1979. (Petition, Rollo, p. 21)
Petitioner further stresses that Decision No. 84-83 (TM) promulgated by the Philippine
Patent Office on October 2, 1984 which held that "the name and likeness of CHARLIE
BROWN may not provide a cause of action for the cancellation of a trademark
registration," was based in the conclusion made in the case of "Children's Television
Workshop v. Touch of Class" earlier decided by the Director of Patent Office on May
10, 1984. However, when the latter case was appealed to the then Intermediate
Appellate Court, docketed as A.C. G.R. SP No. 03432, the appellate court reversed the
decision as illegal and contrary to law. This reversal was affirmed by this Court on
August 7, 1985 in G.R. No. 71210 by denying the petition of respondent Touch of Class.
The Court of Appeals in reversing the Director of Patent's decision in Touch of Class,
Inc. succintly said:
"The Patents Office ruled that a trademark, unlike a label, cannot be copyrighted. The
'Cookie Monster' is not, however, a trademark. It is a character in a TV series entitled
'Sesame Street.' It was respondent which appropriated the 'Cookie Monster' as a
trademark, after it has been copyrighted. We hold that the exclusive right secured by
P.D. 49 to the petitioner precludes the appropriation of the 'Cookie Monster' by the
respondent."
Pertinenetly, Section 2 of Presidential Decree No. 49, otherwise known as the "Decree
on Intellectual Property," provides:
"Section 2. The rights granted by this Decree shall, form the moment of creation,
subsist with respect to any of the following classes of works:
xxx xxx xxx

"(O) Prints, pictorial illustrations, advertising copies, labels, tags and box wraps. x x x"
Therefore, since the name CHARLIE BROWN" and its principal representation were
covered by a copyright registration way back in 1950 the same are entitled to protection
under P.D. No. 49.
Aside from its copyright registration, petitioner is also the owner of several trademark
registrations and application for the name and likeness of "CHARLIE BROWN" which
is the duly registered trademark and copyright of petitioner United Feature Syndicate,
Inc. as early as 1957 and additionally also as TV SPECIALS featuring the "PEANUTS"
characters and "CHARLIE BROWN" (Memorandum, Rollo, p. 97 [211]).
An examination of the records show that the only appreciable defense of respondent-
registrant is embodied in its answer, which reads:
"It uses, the trademark 'CHARLIE BROWN' & 'DEVICE' on children's wear such as T-
shirts, undershirts, sweaters, brief and sandos, in class 25; whereas 'CHARLIE
BROWN' is used only by petitioner as character, in a pictorial illustration used in a
comic strip appearing in newspapers and magazines. It has no trademark significance
and therefore respondent-registrant's use of 'CHARLIE BROWN' & 'DEVICE' is not in
conflict with petitioner's use of 'CHARLIE BROWN'" (Rollo, p. 97 [21]).
It is undeniable from the records that petitioner is the actual owner of said trademark
due to its prior registration with the Patent's Office.
Finally, in La Chemise Lacoste S.A. v. Hon. Oscar Fernandez and Gobindram
Hemandas Sujanani v. Hon. Roberto V. Ongpin, et al., 129SCRA373 [1984], the Court
declared:
"In upholding the right of the petitioner to maintain the present suit before our courts
for unfair competition or infringement of trademarks of a foreign corporation, we are
moreover recognizing our duties and the rights of foregoing states under the Paris
Convention for the Protection of Industrial Property to which the Philippines and
(France) U.S. are parties. We are simply interpreting a solemn international
commitment of the Philippines embodied in a multilateral treaty to which we are a
party and which we entered into because it is in our national interest to do so.
PREMISES CONSIDERED, the Resolution of the Court of Appeals dated September
16, 1986 and October 14, 1986 dismissing petitioner's appeal are hereby SET ASIDE
and Certificate of Registration No. SR-424 issued to private respondent dated
September 12, 1979 is hereby CANCELLED.
SO ORDERED.
Baker v. Selden

101 U.S. 99

APPEAL FROM THE CIRCUIT COURT OF THE UNITED

STATES FOR THE SOUTHERN DISTRICT OF OHIO

Syllabus

1. A claim to the exclusive property in a peculiar system of bookkeeping cannot,

under the law of copyright, be maintained by the author of a treatise in which that
system is exhibited and explained.

2. The difference between a copyright and letters patent stated and illustrated.

The facts are stated in the opinion of the Court.

MR. JUSTICE BRADLEY delivered the opinion of the Court.

Charles Selden, the testator of the complainant in this case, in the year 1859 took
the requisite steps for obtaining the copyright

Page 101 U. S. 100

of a book, entitled "Selden's Condensed Ledger, or Bookkeeping Simplified," the

object of which was to exhibit and explain a peculiar system of bookkeeping. In
1860 and 1861, he took the copyright of several other books, containing additions
to and improvements upon the said system. The bill of complaint was filed against
the defendant, Baker, for an alleged infringement of these copyrights. The latter,
in his answer, denied that Selden was the author or designer of the books, and
denied the infringement charged, and contends on the argument that the matter
alleged to be infringed is not a lawful subject of copyright.

The parties went into proofs, and the various books of the complainant, as well as
those sold and used by the defendant, were exhibited before the examiner, and
witnesses were examined to both sides. A decree was rendered for the
complainant, and the defendant appealed.

The book or series of books of which the complainant claims the copyright
consists of an introductory essay explaining the system of bookkeeping referred
to, to which are annexed certain forms or banks, consisting of ruled lines, and
headings, illustrating the system and showing how it is to be used and carried out
in practice. This system effects the same results as bookkeeping by double entry,
but, by a peculiar arrangement of columns and headings, presents the entire
operation, of a day, a week, or a month on a single page or on two pages facing
each other, in an account book. The defendant uses a similar plan so far as
results are concerned, but makes a different arrangement of the columns, and
uses different headings. If the complainant's testator had the exclusive right to
the use of the system explained in his book, it would be difficult to contend that
the defendant does not infringe it, notwithstanding the difference in his form of
arrangement; but if it be assumed that the system is open to public use, it seems
to be equally difficult to contend that the books made and sold by the defendant
are a violation of the copyright of the complainant's book considered merely as a
book explanatory of the system. Where the truths of a science or the methods of
an art are the common property of the whole world, any author has the right to
express the one, or explain and use the other, in

Page 101 U. S. 101

his own way. As an author, Selden explained the system in a particular way. It may
be conceded that Baker makes and uses account books arranged on substantially
the same system, but the proof fails to show that he has violated the copyright of
Selden's book, regarding the latter merely as an explanatory work, or that he has
infringed Selden's right in any way, unless the latter became entitled to an
exclusive right in the system.

The evidence of the complainant is principally directed to the object of showing

that Baker uses the same system as that which is explained and illustrated in
Selden's books. It becomes important, therefore, to determine whether, in
obtaining the copyright of his books, he secured the exclusive right to the use of
the system or method of bookkeeping which the said books are intended to
illustrate and explain. It is contended that he has secured such exclusive right
because no one can use the system without using substantially the same ruled
lines and headings which he was appended to his books in illustration of it. In
other words, it is contended that the ruled lines and headings, given to illustrate
the system, are a part of the book, and as such are secured by the copyright, and
that no one can make or use similar ruled lines and headings, or ruled lines and
headings made and arranged on substantially the same system, without violating
the copyright. And this is really the question to be decided in this case. Stated in
another form, the question is whether the exclusive property in a system of
bookkeeping can be claimed under the law or copyright by means of a book in
which that system is explained? The complainant's bill, and the case made under
it, are based on the hypothesis that it can be.

It cannot be pretended, and indeed it is not seriously urged, that the ruled lines of
the complainant's account book can be claimed under any special class of
objects, other than books, named in the law of copyright existing in 1859. The law
then in force was that of 1831, and specified only books, maps, charts, musical
compositions, prints, and engravings. An account book, consisting of ruled lines
and blank columns, cannot be called by any of these names unless by that of a
book.

There is no doubt that a work on the subject of bookkeeping,

Page 101 U. S. 102

though only explanatory of well known systems, may be the subject of a

copyright, but then it is claimed only as a book. Such a book may be explanatory
either of old systems or of an entirely new system, and, considered as a book, as
the work of an author, conveying information on the subject of bookkeeping, and
containing detailed explanations of the art, it may be a very valuable acquisition
to the practical knowledge of the community. But there is a clear distinction
between the book as such and the art which it is intended to illustrate. The mere
statement of the proposition is so evident that it requires hardly any argument to
support it. The same distinction may be predicated of every other art as well as
that of bookkeeping. A treatise on the composition and use of medicines, be they
old or new; on the construction and use of ploughs, or watches, or churns; or on
the mixture and application of colors for painting or dyeing; or on the mode of
drawing lines to produce the effect of perspective -- would be the subject of
copyright; but no one would contend that the copyright of the treatise would give
the exclusive right to the art or manufacture described therein. The copyright of
the book, if not pirated from other works, would be valid without regard to the
novelty, or want of novelty, of its subject matter. The novelty of the art or thing
described or explained has nothing to do with the validity of the copyright. To give
to the author of the book an exclusive property in the art described therein when
no examination of its novelty has ever been officially made would be a surprise
and a fraud upon the public. That is the province of letters patent, not of
copyright. The claim to an invention or discovery of an art or manufacture must
be subjected to the examination of the Patent Office before an exclusive right
therein can be obtained, and it can only be secured by a patent from the
government.

The difference between the two things, letters patent and copyright, may be
illustrated by reference to the subjects just enumerated. Take the case of
medicines. Certain mixtures are found to be of great value in the healing art. If
the discoverer writes and publishes a book on the subject (as regular physicians
generally do), he gains no exclusive right to the manufacture and sale of the
medicine; he gives that to the

Page 101 U. S. 103

public. If he desires to acquire such exclusive right, he must obtain a patent for
the mixture as a new art, manufacture, or composition of matter. He may
copyright his book if he pleases, but that only secures to him the exclusive right
of printing and publishing his book. So of all other inventions or discoveries.
The copyright of a book on perspective, no matter how many drawings and
illustrations it may contain, gives no exclusive right to the modes of drawing
described, though they may never have been known or used before. By publishing
the book without getting a patent for the art, the latter is given to the public. The
fact that the art described in the book by illustrations of lines and figures which
are reproduced in practice in the application of the art makes no difference.
Those illustrations are the mere language employed by the author to convey his
ideas more clearly. Had he used words of description instead of diagrams (which
merely stand in the place of words), there could not be the slightest doubt that
others, applying the art to practical use, might lawfully draw the lines and
diagrams which were in the author's mind, and which he thus described by words
in his book.

The copyright of a work on mathematical science cannot give to the author an

exclusive right to the methods of operation which he propounds, or to the
diagrams which he employs to explain them, so as to prevent an engineer from
using them whenever occasion requires. The very object of publishing a book on
science or the useful arts is to communicate to the world the useful knowledge
which it contains. But this object would be frustrated if the knowledge could not
be used without incurring the guilt of piracy of the book. And where the art it
teaches cannot be used without employing the methods and diagrams used to
illustrate the book, or such as are similar to them, such methods and diagrams
are to be considered as necessary incidents to the art, and given therewith to the
public -- not given for the purpose of publication in other works explanatory of the
art, but for the purpose of practical application.

Of course these observations are not intended to apply to ornamental designs or

pictorial illustrations addressed to the taste. Of these it may be said that their
form is their essence,

Page 101 U. S. 104

and their object, the production of pleasure in their contemplation. This is their
final end. They are as much the product of genius and the result of composition as
are the lines of the poet or the historian's period. On the other hand, the
teachings of science and the rules and methods of useful art have their final end
in application and use, and this application and use are what the public derive
from the publication of a book which teaches them. But as embodied and taught
in a literary composition or book, their essence consists only in their statement.
This alone is what is secured by the copyright. The use by another of the same
methods of statement, whether in words or illustrations, in a book published for
teaching the art would undoubtedly be an infringement of the copyright.

Recurring to the case before us, we observe that Charles Selden, by his books,
explained and described a peculiar system of bookkeeping, and illustrated his
method by means of ruled lines and blank columns, with proper headings on a
page or on successive pages. Now whilst no one has a right to print or publish his
book, or any material part thereof, as a book intended to convey instruction in the
art, any person may practice and use the art itself which he has described and
illustrated therein. The use of the art is a totally different thing from a publication
of the book explaining it. The copyright of a book on bookkeeping cannot secure
the exclusive right to make, sell, and use account books prepared upon the plan
set forth in such book. Whether the art might or might not have been patented is a
question which is not before us. It was not patented, and is open and free to the
use of the public. And of course, in using the art, the ruled lines and headings of
accounts must necessarily be used as incident to it.

The plausibility of the claim put forward by the complainant in this case arises
from a confusion of ideas produced by the peculiar nature of the art described in
the books which have been made the subject of copyright. In describing the art,
the illustrations and diagrams employed happen to correspond more closely than
usual with the actual work performed by the operator who uses the art. Those
illustrations and diagrams consist of ruled lines and headings of accounts, and

Page 101 U. S. 105

it is similar ruled lines and headings of accounts which, in the application of the
art, the bookkeeper makes with his pen, or the stationer with his press, whilst in
most other cases the diagrams and illustrations can only be represented in
concrete forms of wood, metal, stone, or some other physical embodiment. But
the principle is the same in all. The description of the art in a book, though
entitled to the benefit of copyright, lays no foundation for an exclusive claim to
the art itself. The object of the one is explanation; the object of the other is use.
The former may be secured by copyright. The latter can only be secured, if it can
be secured at all, by letters patent.

The remarks of Mr. Justice Thompson in the circuit court in Clayton v. Stone &
Hall, 2 Paine 392, in which copyright was claimed in a daily price-current, are
apposite and instructive. He says:

"In determining the true construction to be given to the act of Congress, it is

proper to look at the Constitution of the United States to aid us in ascertaining
the nature of the property intended to be protected. 'Congress shall have power to
promote the progress of science and useful arts, by securing for limited times to
authors and inventors the exclusive right to their writings and discoveries.' The
act in question was passed in execution of the power here given, and the object,
therefore, was the promotion of science; and it would certainly be a pretty
extraordinary view of the sciences to consider a daily or weekly publication of the
state of the market as falling within any class of them. They are of a more fixed,
permanent, and durable character. The term 'science' cannot with any propriety
be applied to a work of so fluctuating and fugitive a form as that of a newspaper
or price-current, the subject matter of which is daily changing, and is of mere
temporary use. Although great praise may be due to the plaintiffs for their
industry and enterprise in publishing this paper, yet the law does not contemplate
their being rewarded in this way; it must seek patronage and protection from its
utility to the public, and not a work of science. The title of the act of Congress is,
'for the encouragement of learning,' and was not intended for the encouragement
of mere industry, unconnected with learning and the sciences. . . . We are
accordingly of opinion that the paper in question is not

Page 101 U. S. 106

a book the copyright to which can be secured under the act of Congress."

The case of Cobbett v. Woodward, Law Rep. 14 Eq. 407, was a claim to copyright
in a catalogue of furniture which the publisher had on sale in his establishment,
illustrated with many drawings of furniture and decorations. The defendants,
being dealers in the same business, published a similar book, and copied many of
the plaintiff's drawings, though it was shown that they had for sale the articles
represented thereby.

The court held that these drawings were not subjects of copyright. Lord Romilly,
M.R., said:

"This is a mere advertisement for the sale of particular articles which any one
might imitate, and any one might advertise for sale. If a man not being a vendor of
any of the articles in question were to publish a work for the purpose of informing
the public of what was the most convenient species of articles for household
furniture, or the most graceful species of decorations for articles of home
furniture, what they ought to cost, and where they might be bought, and were to
illustrate his work with designs of each article he described -- such a work as this
could not be pirated with impunity, and the attempt to do so would be stopped by
the injunction of the Court of Chancery; yet if it were done with no such object,
but solely for the purpose of advertising particular articles for sale, and promoting
the private trade of the publisher by the sale of articles which any other person
might sell as well as the first advertiser, and if in fact it contained little more than
an illustrated inventory of the contents of a warehouse, I know of no law which,
while it would not prevent the second advertiser from selling the same articles,
would prevent him from using the same advertisement, provided he did not in
such advertisement by any device suggest that he was selling the works and
designs of the first advertiser."

Another case, that of Page v. Wisden, 20 L.T.N.S. 435, which came before Vice-
Chancellor Malins in 1869, has some resemblance to the present. There, a
copyright was claimed in a cricket scoring sheet, and the Vice-Chancellor held
that it was not a fit subject for copyright, partly because it was not new, but also
because "to say that a particular

Page 101 U. S. 107

mode of ruling a book constituted an object for a copyright is absurd."

These cases, if not precisely in point, come near to the matter in hand, and, in our
view, corroborate the general proposition which we have laid down.

In Drury v. Ewing, 1 Bond, 540, which is much relied on by the complainant, a

copyright was claimed in a chart of patterns for cutting dresses and basques for
ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only
be printed and published for information, and not for use in themselves. Their
practical use could only be exemplified in cloth on the tailor's board and under his
shears -- in other words, by the application of a mechanical operation to the
cutting of cloth in certain patterns and forms. Surely the exclusive right to this
practical use was not reserved to the publisher by his copyright of the chart.
Without undertaking to say whether we should or should not concur in the
decision in that case, we think it cannot control the present.

The conclusion to which we have come is that blank account books are not the
subject of copyright, and that the mere copyright of Selden's book did not confer
upon him the exclusive right to make and use account books, ruled and arranged
as designated by him and described and illustrated in said book.

The decree of the circuit court must be reversed and the cause remanded with
instructions to dismiss the complainant's bill, and it is

So ordered.
 A. A. HOEHLING, Plaintiff-Appellant,
v.
UNIVERSAL CITY STUDIOS, INC., and Michael MacDonald Mooney,
Defendants-Appellees.
No. 692, Docket 79-7704.
United States Court of Appeals,
Second Circuit.
Argued Feb. 27, 1980.
Decided March 25, 1980.
James C. Eastman, Washington, D. C., for plaintiff-appellant.
Coudert Bros., New York City (Eugene L. Girden, New York City, of counsel), for defendant-appellee Universal
City Studios, Inc.
Peter A. Flynn, and Myron M. Cherry, Chicago, Ill. (Cherry, Flynn & Kanter, Chicago, Ill., Hervey M. Johnson,
White Plains, N. Y.), and James J. McEnroe, New York City (Watson, Leavenworth, Kelton & Taggert, New York
City), for defendant-appellee Michael M. Mooney.
Before KAUFMAN, Chief Judge, TIMBERS, Circuit Judge, and WERKER, District Judge. *
IRVING R. KAUFMAN, Chief Judge:
1

A grant of copyright in a published work secures for its author a limited monopoly over the expression it contains.
The copyright provides a financial incentive to those who would add to the corpus of existing knowledge by
creating original works. Nevertheless, the protection afforded the copyright holder has never extended to history,
be it documented fact or explanatory hypothesis. The rationale for this doctrine is that the cause of knowledge is
best served when history is the common property of all, and each generation remains free to draw upon the
discoveries and insights of the past. Accordingly, the scope of copyright in historical accounts is narrow indeed,
embracing no more than the author's original expression of particular facts and theories already in the public
domain. As the case before us illustrates, absent wholesale usurpation of another's expression, claims of
copyright infringement where works of history are at issue are rarely successful.
I.
2

This litigation arises from three separate accounts of the triumphant introduction, last voyage, and tragic
destruction of the Hindenburg, the colossal dirigible constructed in Germany during Hitler's reign. The zeppelin,
the last and most sophisticated in a fleet of luxury airships, which punctually floated its wealthy passengers from
the Third Reich to the United States, exploded into flames and disintegrated in 35 seconds as it hovered above
the Lakehurst, New Jersey Naval Air Station at 7:25 p. m. on May 6, 1937. Thirty-six passengers and crew were
killed but, fortunately, 52 persons survived. Official investigations conducted by both American and German
authorities could ascertain no definitive cause of the disaster, but both suggested the plausibility of static
electricity or St. Elmo's Fire, which could have ignited the highly explosive hydrogen that filled the airship.
Throughout, the investigators refused to rule out the possibility of sabotage.
3

The destruction of the Hindenburg marked the concluding chapter in the chronicle of airship passenger service,
for after the tragedy at Lakehurst, the Nazi regime permanently grounded the Graf Zeppelin I and discontinued
its plan to construct an even larger dirigible, the Graf Zeppelin II.
4

The final pages of the airship's story marked the beginning of a series of journalistic, historical, and literary
accounts devoted to the Hindenburg and its fate. Indeed, weeks of testimony by a plethora of witnesses before
the official investigative panels provided fertile source material for would-be authors. Moreover, both the
American and German Commissions issued official reports, detailing all that was then known of the tragedy. A
number of newspaper and magazine articles had been written about the Hindenburg in 1936, its first year of
trans-Atlantic service, and they, of course, multiplied many fold after the crash. In addition, two passengers
Margaret Mather and Gertrud Adelt published separate and detailed accounts of the voyage, C. E. Rosendahl,
commander of the Lakehurst Naval Air Station and a pioneer in airship travel himself, wrote a book titled What
About the Airship?, in which he endorsed the theory that the Hindenburg was the victim of sabotage. In 1957,
 Nelson Gidding, who would return to the subject of the Hindenburg some 20 years later, wrote an unpublished
"treatment" for a motion picture based on the deliberate destruction of the airship. In that year as well, John
Toland published Ships in the Sky which, in its seventeenth chapter, chronicled the last flight of the Hindenburg.
In 1962, Dale Titler released Wings of Mystery, in which he too devoted a chapter to the Hindenburg. 1
5

Appellant A. A. Hoehling published Who Destroyed the Hindenburg ?, a full-length book based on his exhaustive
research in 1962. Mr. Hoehling studied the investigative reports, consulted previously published articles and
books, and conducted interviews with survivors of the crash as well as others who possessed information about
the Hindenburg. His book is presented as a factual account, written in an objective, reportorial style.
6

The first half recounts the final crossing of the Hindenburg, from Sunday, May 2, when it left Frankfurt, to
Thursday, May 6, when it exploded at Lakehurst. Hoehling describes the airship, its role as an instrument of
propaganda in Nazi Germany, its passengers and crew, the danger of hydrogen, and the ominous threats
received by German officials, warning that the Hindenburg would be destroyed. The second portion, headed The
Quest, sets forth the progress of the official investigations, followed by an account of Hoehling's own research. In
the final chapter, spanning eleven pages, Hoehling suggests that all proffered explanations of the explosion, save
deliberate destruction, are unconvincing. He concludes that the most likely saboteur is one Eric Spehl, a "rigger"
on the Hindenburg crew who was killed at Lakehurst.
7

According to Hoehling, Spehl had motive, expertise, and opportunity to plant an explosive device, constructed of
dry-cell batteries and a flashbulb, in "Gas Cell 4," the location of the initial explosion. An amateur photographer
with access to flashbulbs, Spehl could have destroyed the Hindenburg to please his ladyfriend, a suspected
communist dedicated to exploding the myth of Nazi invincibility.
8

Ten years later appellee Michael MacDonald Mooney published his book, The Hindenburg. Mooney's endeavor
might be characterized as more literary than historical in its attempt to weave a number of symbolic themes
through the actual events surrounding the tragedy. His dominant theme contrasts the natural beauty of the
month of May, when the disaster occurred, with the cold, deliberate progress of "technology." The May theme is
expressed not simply by the season, but also by the character of Spehl, portrayed as a sensitive artisan with
needle and thread. The Hindenburg, in contrast, is the symbol of technology, as are its German creators and the
Reich itself. The destruction is depicted as the ultimate triumph of nature over technology, as Spehl plants the
bomb that ignites the hydrogen. Developing this theme from the outset, Mooney begins with an extended review
of man's efforts to defy nature through flight, focusing on the evolution of the zeppelin. This story culminates in
the construction of the Hindenburg, and the Nazis' claims of its indestructibility. Mooney then traces the fateful
voyage, advising the reader almost immediately of Spehl's scheme. The book concludes with the airship's
explosion.
9

Mooney acknowledges, in this case, that he consulted Hoehling's book, and that he relied on it for some details.
He asserts that he first discovered the "Spehl-as-saboteur" theory when he read Titler's Wings of Mystery. Indeed,
Titler concludes that Spehl was the saboteur, for essentially the reasons stated by Hoehling. Mooney also claims
to have studied the complete National Archives and New York Times files concerning the Hindenburg, as well as
all previously published material. Moreover, he traveled to Germany, visited Spehl's birthplace, and conducted a
number of interviews with survivors.
10

After Mooney prepared an outline of his anticipated book, his publisher succeeded in negotiations to sell the
motion picture rights to appellee Universal City Studios. 2 Universal then commissioned a screen story by writers
Levinson and Link, best known for their television series, Columbo, in which a somewhat disheveled, but wise
detective unravels artfully conceived murder mysteries. In their screen story, Levinson and Link created a
Columbo-like character who endeavored to identify the saboteur on board the Hindenburg. Director Robert Wise,
however, was not satisfied with this version, and called upon Nelson Gidding to write a final screenplay. Gidding,
it will be recalled, had engaged in preliminary work on a film about the Hindenburg almost twenty years earlier.
11
 The Gidding screenplay follows what is known in the motion picture industry as a "Grand Hotel" formula,
developing a number of fictional characters and subplots involving them. This formula has become standard fare
in so-called "disaster" movies, which have enjoyed a certain popularity in recent years. In the film, which was
released in late 1975, a rigger named "Boerth," who has an anti-Nazi ladyfriend, plans to destroy the airship in an
effort to embarrass the Reich. Nazi officials, vaguely aware of sabotage threats, station a Luftwaffe intelligence
officer on the zeppelin, loosely resembling a Colonel Erdmann who was aboard the Hindenburg. This character is
portrayed as a likable fellow who soon discovers that Boerth is the saboteur. Boerth, however, convinces him that
the Hindenburg should be destroyed and the two join forces, planning the explosion for several hours after the
landing at Lakehurst, when no people would be on board. In Gidding's version, the airship is delayed by a storm,
frantic efforts to defuse the bomb fail, and the Hindenburg is destroyed. The film's subplots involve other possible
suspects, including a fictional countess who has had her estate expropriated by the Reich, two fictional
confidence men wanted by New York City police, and an advertising executive rushing to close a business deal in
America.
12

Upon learning of Universal's plans to release the film, Hoehling instituted this action against Universal for
copyright infringement and common law unfair competition in the district court for the District of Columbia in
October 1975. Judge Smith declined to issue an order restraining release of the film in December, and it was
distributed throughout the nation.
13

In January 1976, Hoehling sought to amend his complaint to include Mooney as a defendant. The district court,
however, decided that it lacked personal jurisdiction over Mooney. 3 In June 1976, Hoehling again attempted to
amend his complaint, this time to add Mooney's publishers as defendants. Judge Smith denied this motion as
well, but granted Hoehling's request to transfer the litigation to the Southern District of New York, 28 U.S.C.
1404(a), where Mooney himself was successfully included as a party. Judge Metzner, with the assistance of
Magistrate Sinclair, supervised extensive discovery through most of 1978. After the completion of discovery, both
Mooney and Universal moved for summary judgment, Fed.R.Civ.P. 56, which was granted on August 1, 1979.
II.
14
It is undisputed that Hoehling has a valid copyright in his book. To prove infringement, however, he must
demonstrate that defendants "copied" his work and that they "improperly appropriated" his "expression." See
Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946). Ordinarily, wrongful appropriation is shown by proving a
"substantial similarity" of copyrightable expression. See Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d
Cir. 1930), cert. denied, 282 U.S. 902, 51 S. Ct. 216, 75 L. Ed. 795 (1931). Because substantial similarity is
customarily an extremely close question of fact, see Arnstein, supra, 154 F.2d at 468, summary judgment has
traditionally been frowned upon in copyright litigation, id. at 474. Nevertheless, while Arnstein 's influence in
other areas of the law has been diminished, see SEC v. Research Automation Corp., 585 F.2d 31 (2d Cir. 1978); 6
Moore's Federal Practice P 56.17(14) (2d ed. 1976), a series of copyright cases in the Southern District of New
York have granted defendants summary judgment when all alleged similarity related to non -copyrightable
elements of the plaintiff's work, see, e. g., Alexander v. Haley, 460 F. Supp. 40 (S.D.N.Y.1978); Musto v.
Meyer, 434 F. Supp. 32 (S.D.N.Y.1977); Gardner v. Nizer, 391 F. Supp. 940 (S.D.N.Y.1975); Fuld v. National
Broadcasting Co., 390 F. Supp. 877 (S.D.N.Y.1975). These cases signal an important development in the law of
copyright, permitting courts to put "a swift end to meritless litigation" and to avoid lengthy and costly trials.
Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir. 1980); accord, Donnelly v. Guion, 467
F.2d 290, 293 (2d Cir. 1972); American Manufacturers Mutual Insurance Co. v. American Broadcasting-Paramount
Theatres, Inc., 388 F.2d 272, 278 (2d Cir. 1967). Drawing on these cases, Judge Metzner assumed both copying
and substantial similarity, but concluded that all similarities pertained to various categories of non-copyrightable
material. Accordingly, he granted appellees' motion for summary judgment. We affirm the judgment of the
district court.
15

* Hoehling's principal claim is that both Mooney and Universal copied the essential plot of his book i. e., Eric
Spehl, influenced by his girlfriend, sabotaged the Hindenburg by placing a crude bomb in Gas Cell 4. In their
briefs, and at oral argument, appellees have labored to convince us that their plots are not substantially similar to
Hoehling's. While Hoehling's Spehl destroys the airship to please his communist girlfriend, Mooney's character is
motivated by an aversion to the technological age. Universal's Boerth, on the other hand, is a fervent anti-fascist
who enlists the support of a Luftwaffe colonel who, in turn, unsuccessfully attempts to defuse the bomb at the
eleventh hour.
16
Although this argument has potential merit when presented to a fact finder adjudicating the issue of substantial
similarity, it is largely irrelevant to a motion for summary judgment where the issue of substantial similarity has
been eliminated by the judge's affirmative assumption. Under Rule 56(c), summary judgment is appropriate only
 when "there is no genuine issue as to any material fact." Accord, Heyman v. Commerce & Industry Insurance
Co., 524 F.2d 1317 (2d Cir. 1975). Perhaps recognizing this, appellees further argue that Hoehling's plot is an
"idea," and ideas are not copyrightable as a matter of law. See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d
49, 54 (2d Cir.), cert. denied, 298 U.S. 669, 56 S. Ct. 835, 80 L. Ed. 1392 (1936).
17
Hoehling, however, correctly rejoins that while ideas themselves are not subject to copyright, his "expression" of
his idea is copyrightable. Id. at 54. He relies on Learned Hand's opinion in Sheldon, supra, at 50, holding that
Letty Lynton infringed Dishonored Lady by copying its story of a woman who poisons her lover, and Augustus
Hand's analysis in Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940), concluding that
the exploits of "Wonderman" infringed the copyright held by the creators of "Superman," the original
indestructible man. Moreover, Hoehling asserts that, in both these cases, the line between "ideas" and
"expression" is drawn, in the first instance, by the fact finder.
18
Sheldon and Detective Comics, however, dealt with works of fiction, 4 where the distinction between an idea and
its expression is especially elusive. But, where, as here, the idea at issue is an interpretation of an historical
event, our cases hold that such interpretations are not copyrightable as a matter of law. In Rosemont Enterprises,
Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S. 1009, 87 S. Ct. 714, 17 L.
Ed. 2d 546 (1967), we held that the defendant's biography of Howard Hughes did not infringe an earlier
biography of the reclusive alleged billionaire. Although the plots of the two works were necessarily similar, there
could be no infringement because of the "public benefit in encouraging the development of historical and
biographical works and their public distribution." Id. at 307; accord, Oxford Book Co. v. College Entrance Book
Co., 98 F.2d 688 (2d Cir. 1938). To avoid a chilling effect on authors who contemplate tackling an historical issue
or event, broad latitude must be granted to subsequent authors who make use of historical subject matter,
including theories or plots. Learned Hand counseled in Myers v. Mail & Express Co., 36 C.O.Bull. 478, 479
(S.D.N.Y.1919), "(t)here cannot be any such thing as copyright in the order of presentation of the facts, nor,
indeed, in their selection."5
19

In the instant case, the hypothesis that Eric Spehl destroyed the Hindenburg is based entirely on the
interpretation of historical facts, including Spehl's life, his girlfriend's anti-Nazi connections, the explosion's origin
in Gas Cell 4, Spehl's duty station, discovery of a dry-cell battery among the wreckage, and rumors about Spehl's
involvement dating from a 1938 Gestapo investigation. Such an historical interpretation, whether or not it
originated with Mr. Hoehling, is not protected by his copyright and can be freely used by subsequent authors.
B
20
The same reasoning governs Hoehling's claim that a number of specific facts, ascertained through his personal
research, were copied by appellees.6 The cases in this circuit, however, make clear that factual information is in
the public domain. See, e. g., Rosemont Enterprises, Inc., supra, 366 F.2d at 309; Oxford Book Co., supra, 98 F.2d
at 691. Each appellee had the right to "avail himself of the facts contained" in Hoehling's book and to "use such
information, whether correct or incorrect, in his own literary work." Greenbie v. Noble, 151 F. Supp. 45, 67
(S.D.N.Y.1957). Accordingly, there is little consolation in relying on cases in other circuits holding that the fruits of
original research are copyrightable. See, e. g., Toksvig v. Bruce Publications Corp., 181 F.2d 664, 667 (7th Cir.
1950); Miller v. Universal City Studios, Inc., 460 F. Supp. 984 (S.D.Fla.1978). Indeed, this circuit has clearly
repudiated Toksvig and its progeny. In Rosemont Enterprises, Inc., supra, 366 F.2d at 310, we refused to
"subscribe to the view that an author is absolutely precluded from saving time and effort by referring to and
relying upon prior published material. . . . It is just such wasted effort that the proscription against the copyright
of ideas and facts . . . . are designed to prevent." Accord, 1 Nimmer on Copyright 2.11 (1979).
C
21
The remainder of Hoehling's claimed similarities relate to random duplications of phrases and sequences of
events. For example, all three works contain a scene in a German beer hall, in which the airship's crew engages
in revelry prior to the voyage. Other claimed similarities concern common German greetings of the period, such
as "Heil Hitler," or songs, such as the German National anthem. These elements, however, are merely scenes a
faire, that is, "incidents, characters or settings which are as a practical matter indispensable, or at least standard,
in the treatment of a given topic." Alexander, supra, 460 F.Supp. at 45; accord, Bevan v. Columbia Broadcasting
System, Inc., 329 F. Supp. 601, 607 (S.D.N.Y.1971). Because it is virtually impossible to write about a particular
historical era or fictional theme without employing certain "stock" or standard literary devices, we have held that
scenes a faire are not copyrightable as a matter of law. See Reyher v. Children's Television Workshop, 533 F.2d
87, 91 (2d Cir.), cert. denied, 429 U.S. 980, 97 S. Ct. 492, 50 L. Ed. 2d 588 (1976).
D
22
All of Hoehling's allegations of copying, therefore, encompass material that is non-copyrightable as a matter of
law, rendering summary judgment entirely appropriate. We are aware, however, that in distinguishing between
themes, facts, and scenes a faire on the one hand, and copyrightable expression on the other, courts may lose
sight of the forest for the trees. By factoring out similarities based on non-copyrightable elements, a court runs
 the risk of overlooking wholesale usurpation of a prior author's expression. A verbatim reproduction of another
work, of course, even in the realm of nonfiction, is actionable as copyright infringement. See Wainwright
Securities, Inc. v. Wall Street Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014, 98 S.
Ct. 730 (1978). Thus, in granting or reviewing a grant of summary judgment for defendants, courts should
assure themselves that the works before them are not virtually identical. In this case, it is clear that all three
authors relate the story of the Hindenburg differently.
23
In works devoted to historical subjects, it is our view that a second author may make significant use of prior work,
so long as he does not bodily appropriate the expression of another. Rosemont Enterprises, Inc., supra, 366 F.2d
at 310. This principle is justified by the fundamental policy undergirding the copyright laws the encouragement of
contributions to recorded knowledge. The "financial reward guaranteed to the copyright holder is but an incident
of this general objective, rather than an end in itself." Berlin v. E. C. Publications, Inc., 329 F.2d 541, 543-44 (2d
Cir.), cert. denied, 379 U.S. 822, 85 S. Ct. 46, 13 L. Ed. 2d 33 (1964). Knowledge is expanded as well by
granting new authors of historical works a relatively free hand to build upon the work of their predecessors. 7
III
24
Finally, we affirm Judge Metzner's rejection of Hoehling's claims based on the common law of "unfair
competition." Where, as here, historical facts, themes, and research have been deliberately exempted from the
scope of copyright protection to vindicate the overriding goal of encouraging contributions to recorded
knowledge, the states are pre-empted from removing such material from the public domain. See, e. g., Sears,
Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 83 S. Ct. 1868, 10 L. Ed. 2d 1050 (1964); Compco Corp. v. Day-
Brite Lighting, Inc., 376 U.S. 234, 84 S. Ct. 779, 11 L. Ed. 2d 669 (1964). "To forbid copying" in this case,
"would interfere with the federal policy . . . of allowing free access to copy whatever the federal patent and
copyright laws leave in the public domain." Id. at 237, 84 S.Ct. at 782.
25

The judgment of the district court is affirmed.

 AMERICAN DENT. ASSN. v. DELTA DEN. PLANS
ASSN., 126 F.3d 977 (7th Cir. 1997)
Before EASTERBROOK, RIPPLE, and MANION, Circuit
Judges.

EASTERBROOK, Circuit Judge.

[1] This case presents the question whether a taxonomy is copyrightable. The American Dental
Association has created the Code on Dental Procedures and Nomenclature. The first edition was
published in 1969; the Code has been revised frequently since, in response to changes in dental
knowledge and technology. All dental procedures are classified into groups; each procedure
receives a number, a short description, and a long description. For example, number 04267 has
been assigned to the short description "guided tissue regeneration - nonresorbable barrier, per site,
per tooth (includes membrane removal)", which is classified with other surgical periodontic
services. The Code made its first appearance in the Journal of the American Dental Association,
covered by a general copyright notice; the 1991 and 1994 versions were submitted for copyright
registration, which was granted by the Register of Copyrights. Delta Dental Association has
published a work entitled Universal Coding and Nomenclature that includes most of the numbering
system and short descriptions from the ADA's Code. In this suit for copyright infringement, Delta
contends that it is entitled to reprint modified versions of the Code under an express or implied
license, as a joint author (Delta participated in the groups that drafted the Code), and as fair use. It
contends that by distributing pamphlets containing some of the Code's older versions without
copyright notices the ADA has forfeited its copyright. Delta also argues that the Code is not
copyrightable subject matter, and the district court granted summary judgment in its favor on this
ground without reaching Delta's other arguments.

[2] The district court held that the Code cannot be copyrighted because it catalogs a field of
knowledge - in other words, that no taxonomy may be copyrighted. A comprehensive treatment
cannot be selective in scope or arrangement, the judge believed, and therefore cannot be original
either. Taxonomies are designed to be useful. The judge wrote that if "nothing remains after the
'useful' is taken away - if the primary function is removed from the form - the work is devoid of
even that modicum of creativity required for protection, and hence is uncopyrightable." 39
U.S.P.Q.2d 1715, 1721, Copyright L. Rep. 27,582 at 29,440 (1996) (footnote omitted). No one
would read the ADA's Code for pleasure; it was designed and is used for business (for records of
patients' dental history or making insurance claims) rather than aesthetic purposes. The district
court added that, as the work of a committee, the Code could not be thought original. Creation by
committee is an oxymoron, the judge wrote.

[3] The sweep of the district court's reasoning attracted the attention of many other suppliers of
taxonomies. The American Medical Association, the American National Standards Institute,
Underwriters Laboratories, and several other groups have filed a brief as amici curiae to observe
that they, too, produce catalogs of some field of knowledge and depend on the copyright laws to
enable them to recover the costs of the endeavor. Other groups or firms might say the same. The
manuals issued by the Financial Accounting Standards Board to specify generally accepted
accounting practices could not be copyrighted. Nor could the tests and answers devised by the
Educational Testing Service. The district court's reasoning logically removes copyright protection
from the West Key Number System, which is designed as a comprehensive index to legal topics,
and A Uniform System of Citation (the Bluebook), a taxonomy of legal sources. Very little computer
software could receive a copyright if the district judge is correct: no one reads, for pleasure, the
source or object code of the word processing program on which this opinion was written, or of the
operating system that runs the computer: take away the "useful" elements and these endeavors are
worthless. Worse, most commercial software these days is written by committee, and authors
receive less public credit than the gaffers on a movie set, whose names at least scroll by at the end
after the audience has turned its collective back to head up the aisles. Blueprints for large buildings
(more committee work), instruction manuals for repairing automobiles, used car value guides,
dictionaries, encyclopedias, maps - all these, and many more, would flunk the district court's test of
originality. Yet these items are routinely copyrighted, and challenges to the validity of these
copyrights are routinely rejected. E.g., Educational Testing Service v. Katzman, 793 F.2d 533 (3d
Cir. 1986) (Scholastic Aptitude Test); CCC Information Services, Inc. v. Maclean Hunter Market
Reports, Inc., 44 F.3d 61 (2d Cir. 1994) (list of used-car prices); Lipton v. Nature Co., 71 F.3d 464
(2d Cir. 1995) (terms describing groups of animals). See also 17 U.S.C. 101 (including
"architectural plans" within the definition of "pictoral, graphic and sculptural works" that are
copyrightable); Paul Goldstein, Copyright: Principles, Law and Practice 2.15.2 (1989)
(discussing copyright protection for computer programs). The American Medical Association's
copyright in the Physician's Current Procedural Terminology, its catalog of medical procedures,
was recently sustained, although against a challenge different from the district court's
rationale. Practice Management Information Corp. v. American Medical Association, No. 94-56774
(9th Cir. Aug. 6, 1997), slip op. 9323-27. Maps and globes are not only copyrightable, see Rockford
Map Publishers, Inc. v. Directory Service Co., 768 F.2d 145 (7th Cir. 1985), but also constituted
two-thirds of the original scope of copyright. The Copyright Act of 1790 specified three protectable
items: maps, charts, and books. Act of May 31, 1790, 1 Stat. 124. Like taxonomies, maps are
valued to the extent they offer useful organizations of facts; like the Code, maps are produced by
committees. (As are opinions of appellate courts, which despite this handicap, and the judges' effort
to produce something useful, might occasionally have a modicum of originality.)

[4] Any original literary work may be copyrighted. The necessary degree of "originality" is low,
and the work need not be aesthetically pleasing to be "literary." Feist Publications, Inc v. Rural
Telephone Service Co., 499 U.S. 340, 345-46 (1991). Term papers by college sophomores are as
much within the domain of copyright as Saul Bellow's latest novel. See Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239 (1903). Scholarship that explicates important facts about the
universe likewise is well within this domain. Einstein's articles laying out the special and general
theories of relativity were original works even though many of the core equations, such as the
famous E = mc2, express "facts" and therefore are not copyrightable. Einstein could have explained
relativity in any of a hundred different ways; another physicist could expound the same principles
differently.

[5] So too with a taxonomy - of butterflies, legal citations, or dental procedures. Facts do not supply
their own principles of organization. Classification is a creative endeavor. Butterflies may be
grouped by their color, or the shape of their wings, or their feeding or breeding habits, or their
habitats, or the attributes of their caterpillars, or the sequence of their DNA; each scheme of
classification could be expressed in multiple ways. Dental procedures could be classified by
complexity, or by the tools necessary to perform them, or by the parts of the mouth involved, or by
the anesthesia employed, or in any of a dozen different ways. The Code's descriptions don't "merge
with the facts" any more than a scientific description of butterfly attributes is part of a butterfly. Cf.
Nash v. CBS, Inc., 899 F.2d 1537 (7th Cir. 1990) (discussing the fact-expression dichotomy). There
can be multiple, and equally original, biographies of the same person's life, and multiple original
taxonomies of a field of knowledge. Creativity marks the expression even after the fundamental
scheme has been devised. This is clear enough for the long description of each procedure in the
ADA's Code. The long description is part of the copyrighted work, and original long descriptions
make the work as a whole copyrightable. But we think that even the short description and the
number are original works of authorship.

[6] Number 04267 reads "guided tissue regeneration - nonresorbable barrier, per site, per tooth" but
could have read "regeneration of tissue, guided by nonresorbable barrier, one site and tooth per
entry". Or "use of barrier to guide regeneration of tissue, without regard to the number of sites per
tooth and whether or not the barrier is resorbable". The first variation is linguistic, the second
substantive; in each case the decision to use the actual description is original to the ADA, not
knuckling under to an order imposed on language by some "fact" about dental procedures. Blood is
shed in the ADA's committees about which description is preferable. The number assigned to any
one of the three descriptions could have had four or six digits rather than five; guided tissue
regeneration could have been placed in the 2500 series rather than the 4200 series; again any of
these choices is original to the author of a taxonomy, and another author could do things differently.
Every number in the ADA's Code begins with zero, assuring a large supply of unused numbers for
procedures to be devised or reclassified in the future; an author could have elected instead to leave
wide gaps inside the sequence. A catalog that initially assigns 04266, 04267, 04268 to three
procedures will over time depart substantively from one that initially assigns 42660, 42670, and
42680 to the same three procedures. So all three elements of the Code - numbers, short
descriptions, and long descriptions, are copyrightable subject matter under 17 U.S.C. 102(a).
The Maroon Book and the Bluebook offer different taxonomies of legal citations; Wotquenne and
Helm devised distinct catalogs of C.P.E. Bach's oeuvre; Delta Dental Association could have
written its own classification of dental procedures.

[7] Note that we do not conclude that the Code is a compilation covered by 17 U.S.C. 103. It
could be a compilation only if its elements existed independently and the ADA merely put them in
order. A taxonomy is a way of describing items in a body of knowledge or practice; it is not a
collection or compilation of bits and pieces of "reality". The 1991 and 1994 versions of the Code
may be recompilations of earlier editions, but the original Code is covered by 102(a) as an
"original work of authorship", and its amendments by 106(2) as derivative works.

[8] The district court's contrary conclusion instantiates the adage that where you come out depends
on where you go in. The court asked whether the Code would be copyrightable if it were a lamp.
This is not quite as foolish as it sounds. Congress permits works of art, including sculptures, to be
copyrighted, but does not extend the copyright to industrial design, which in the main falls into the
province of patent, trademark, or trade dress law. See 17 U.S.C. secs. 101, 102(a)(5), 113; W.T.
Rogers Co. v. Keene, 778 F.2d 334 (7th Cir. 1985). When the maker of a lamp - or any other three-
dimensional article that serves some utilitarian office - seeks to obtain a copyright for the item as a
sculpture, it becomes necessary to determine whether its artistic and utilitarian aspects are
separable. If yes, the artistic elements of the design may be copyrighted; if no, the designer must
look outside copyright law for protection from imitation. Compare Hart v. Dan Chase Taxidermy
Supply Co., 86 F.3d 320 (2d Cir. 1996), which holds that fish mannequins may be copyrighted if
they possess artistic features separable from their utilitarian aspects, with Carol Barnhart Inc. v.
Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), which holds that mannequins of human torsos
may not be copyrighted. Judge Zagel applied to the ADA's Code the same approach courts use for
three-dimensional articles, found that the Code has no expression separable from its utilitarian
aspects, and held that it therefore may not be copyrighted.

[9] Such an inquiry mixes two distinct issues: originality and functionality. A lamp may be entirely
original, but if the novel elements are also functional the lamp cannot be copyrighted. This is not a
line between intellectual property and the public domain; it is a line among bodies of intellectual-
property law. An article with intertwined artistic and utilitarian ingredients may be eligible for a
design patent, or the artistic elements may be trade dress protected by the Lanham Act or state law.
Yet the district court did not set out to mark the boundaries among copyright, patent, trademark,
and state law. Anyway, to restate the obvious, the Code is not a sculpture. The ADA does not make
any claim to its protection as a "pictorial, graphic, [or] sculptural" work under 102(a)(5), and the
unique limitations on the protection of that category of works do not extend to the written word.
Not only are the issues different - original is not an antonym for utilitarian - but the special question
under 102(a)(5) and 113 is not one that should be extended. "Of the many fine lines that run
through the Copyright Act, none is more troublesome than the line between protectible pictorial,
graphic and sculptural works and unprotectible utilitarian elements of industrial design." Goldstein,
2.5.3 at 99 (footnote omitted). Whether a literary work is original ought to be a question easy to
pose and easy to answer, so that people know the status of their intellectual property; it ought not be
complicated with a test designed for a completely different problem.

[10] Delta asks us to affirm the judgment on a ground that the district judge did not reach: that the
Code is not copyrightable because it is a "system." Section 102(b) tells us that copyright protection
even of an original work does not cover "any idea, procedure, process, system, method of
operation, concept, principle, or discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work." But what could it mean to call the Code a
"system"? This taxonomy does not come with instructions for use, as if the Code were a recipe for a
new dish. Cf. Publications International, Ltd. v. Meredith Corp., 88 F.3d 473 (7th Cir. 1996)
(holding that recipes are not copyrightable). A dictionary cannot be called a "system" just because
new novels are written using words, all of which appear in the dictionary. Nor is word-processing
software a "system" just because it has a command structure for producing paragraphs. The Code is
a taxonomy, which may be put to many uses. These uses may be or include systems; the Code is
not.

[11] Section 102(b) codifies the fact-expression dichotomy, which we have already considered, as
well as the holding of Baker v. Selden, 101 U.S. 99 (1879), that blank forms are not copyrightable,
even if the structure of the forms captures the essence of an original work of literature. The book
was protected as original literary expression, the Court held, but the form was a means of putting
the book's ideas into practice - and copyright law, unlike patent law, covers only expression.
Someone who buys a book full of ideas for new machines may build and sell one of the machines
without infringing the author's copyright; Baker thought that the use of an accounting system
described in a book is pretty much the same thing, even if practice of the system entails use of the
author's forms. Baker rearranged Selden's forms, but if the original forms were copyrightable then
the rearrangements were derivative works, which the original author had an exclusive right to
produce. Protecting variations on the forms could have permitted the author of an influential
accounting treatise to monopolize the practice of double-entry bookkeeping. Yet copyright law does
not permit the author to monopolize the revenues to be derived from an improved system of
accounting - or of reporting dental procedures. See William M. Landes & Richard A. Posner, An
Economic Analysis of Copyright Law, 17 J. Legal Studies 325, 350-53 (1989).

[12] Few "how-to" works are "systems" in Baker's sense. If they were, architectural blueprints
could be freely copied, although the Berne Convention Implementation Act of 1988, Pub. L. 100-
567, 102 Stat. 2854, adds protection for "architectural plans" to the statute. Descriptions of how to
build or do something do not facilitate monopoly of the subject-matter being described, so the
concern of Baker is not activated. Again consider blueprints: other architects can imitate the style of
the completed building; they just can't copy the plans. What is more, a form that contains
instructions for its completion is copyrightable in part (the instructions) and in the public domain in
part (the lines and boxes). Edwin K. Williams & Co. v. Edwin K. Williams & Co. East, 542 F.2d
1053, 1061 (9th Cir. 1976); Goldstein at 2.15.1.b. So far as the ADA is concerned, any dentist,
any insurer, anyone at all, may devise and use forms into which the Code's descriptions may be
entered. The ADA encourages this use; standardization of language promotes interchange among
professionals. (The fact that Delta used most of the Code but made modifications is the reason
ADA objects, for variations salted through a convention impede communication.) Section 102(b)
precludes the ADA from suing, for copyright infringement, a dentist whose office files record
treatments using the Code's nomenclature. No field of practice has been or can be monopolized,
given this constraint. Section 102(b) permits Delta Dental to disseminate forms inviting dentists to
use the ADA's Code when submitting bills to insurers. But it does not permit Delta to copy the
Code itself, or make and distribute a derivative work based on the Code, any more than Baker
could copy Selden's book.

[13] Whether there are other obstacles to the relief the ADA seeks is a subject best left to the
district court in the first instance. The judgment is vacated, and the case is remanded for further
proceedings consistent with this opinion. Any award of attorneys' fees, the second subject of the
ADA's appeal, must abide the final decision in the litigation.
L. Batlin & Son, Inc., Appellee, v. Jeffrey Snyder D/b/a J. S. N.
Y. and Etna Products Co.,inc., Appellants, 536 F.2d 486 (2d Cir.
1976)

Annotate this Case

U.S. Court of Appeals for the Second Circuit - 536 F.2d 486 (2d Cir. 1976)

Submitted Jan. 19, 1976. Decided April 12, 1976

Robert C. Faber, Stanley H. Lieberstein, Ostrolenk, Faber, Gerb & Soffen, New York
City, for appellants.

Mark H. Sparrow, New York City (Jacobs & Jacobs, P. C., Albert L. Jacobs, Jr., New
York City, of counsel), for appellee.

James E. Siegel, Myron Greenspan, Lackenbach, Lilling & Siegel, New York City,
for E. Mishan & Sons, Inc., amicus curiae.

Before KAUFMAN, Chief Judge, and FEINBERG, MANSFIELD, MULLIGAN, OAKES,

TIMBERS, GURFEIN, VAN GRAAFEILAND, and MESKILL, Circuit Judges.

OAKES, Circuit Judge:

Appellants Jeffrey Snyder and Etna Products Co., Inc., his licensee, appeal from a
preliminary injunction granted L. Batlin & Son, Inc. (Batlin), compelling appellants
to cancel a recordation of a copyright with the United States Customs Service
and restraining them from enforcing that copyright. The district court held, 394 F.
Supp. 1389(S.D.N.Y. 1975), as it had previously in Etna Products Co. v. E. Mishan &
Sons, 75 Civ. 428 (S.D.N.Y. Feb. 13, 1975), that there was "little probability" that
appellants' copyright "will be found valid in the trial on the merits" on the basis
that any variations between appellants' copyrighted plastic bank and a cast iron
bank in the public domain were merely "trivial," and hence appellants' bank
insufficiently "original" to support a copyright. 394 F. Supp. at 1390, citing Alfred
Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99 (2d Cir. 1951). We agree with the
district court and therefore affirm the judgment granting the preliminary
injunction.
Uncle Sam mechanical banks have been on the American scene at least since
June 8, 1886, when Design Patent No. 16,728, issued on a toy savings bank of its
type. The basic delightful design has long since been in the public domain. The
banks are well documented in collectors' books and known to the average person
interested in Americana. A description of the bank is that Uncle Sam, dressed in
his usual stove pipe hat, blue full dress coat, starred vest and red and white
striped trousers, and leaning on his umbrella, stands on a four- or five-inch wide
base, on which sits his carpetbag. A coin may be placed in Uncle Sam's extended
hand. When a lever is pressed, the arm lowers, and the coin falls into the bag,
while Uncle Sam's whiskers move up and down. The base has an embossed
American eagle on it with the words "Uncle Sam" on streamers above it, as well
as the word "Bank" on each side. Such a bank is listed in a number of collectors'
books, the most recent of which may be F. H. Griffith, Mechanical Banks (1972
ed.) where it was listed as No. 280, and is said to be not particularly rare.
Appellant Jeffrey Snyder doing business as "J.S.N.Y." obtained a registration of
copyright on a plastic "Uncle Sam bank" in Class G ("Works of Art") as "sculpture"
on January 23, 1975. According to Snyder's affidavit, in January, 1974, he had
seen a cast metal antique Uncle Sam bank with an overall height of the figure and
base of 11 inches.1 In April, 1974, he flew to Hong Kong to arrange for the design
and eventual manufacture of replicas of the bank as Bicentennial items, taking
the cast metal Uncle Sam bank with him. His Hong Kong buying agent selected a
firm, "Unitoy," to make the plastic "prototype" because of its price and the quality
of its work. Snyder wanted his bank to be made of plastic and to be shorter than
the cast metal sample "in order to fit into the required price range and quality and
quantity of material to be used." The figure of Uncle Sam was thus shortened
from 11 to nine inches, and the base shortened and narrowed. It was also
decided, Snyder averred, to change the shape of the carpetbag and to include the
umbrella in a one-piece mold for the Uncle Sam figure, "so as not to have a
problem with a loose umbrella or a separate molding process." The Unitoy
representative made his sketches while looking at the cast metal bank. After a
"clay model" was made, a plastic "prototype" was approved by Snyder and his
order placed in May, 1974. The plastic bank carried the legend "CR Copyright
J.S.N.Y." and was assertedly first "published" on October 15, 1974, before being
filed with the Register of Copyrights in January, 1975.
Appellee Batlin is also in the novelty business and as early as August 9, 1974,
ordered 30 cartons of cast iron Uncle Sam mechanical banks from Taiwan where
its president had seen the bank made. When he became aware of the existence of
a plastic bank, which he considered "an almost identical copy" of the cast iron
bank, Batlin's trading company in Hong Kong procured a manufacturer and the
president of Batlin ordered plastic copies also. Beginning in April, 1975, Batlin
was notified by the United States Customs Service that the plastic banks it was
receiving were covered by appellants' copyright. In addition the Customs Service
was also refusing entry to cast iron banks previously ordered, according to the
Batlin affidavit. Thus Batlin instituted suit for a judgment declaring appellants'
copyright void and for damages for unfair competition and restraint of trade. The
sole question on this appeal is whether Judge Metzner abused his discretion in
granting Batlin a preliminary injunction. We find that he did not.
This court has examined both the appellants' plastic Uncle Sam bank made under
Snyder's copyright and the uncopyrighted model cast iron mechanical bank which
is itself a reproduction of the original public domain Uncle Sam bank. Appellant
Snyder claims differences not only of size but also in a number of other very
minute details: the carpetbag shape of the plastic bank is smooth, the iron bank
rough; the metal bank bag is fatter at its base; the eagle on the front of the
platform in the metal bank is holding arrows in his talons while in the plastic bank
he clutches leaves, this change concededly having been made, however, because
"the arrows did not reproduce well in plastic on a smaller size." The shape of
Uncle Sam's face is supposedly different, as is the shape and texture of the hats,
according to the Snyder affidavit. In the metal version the umbrella is hanging
loose while in the plastic item it is included in the single mold. The texture of the
clothing, the hairline, shape of the bow ties and of the shirt collar and left arm as
well as the flag carrying the name on the base of the statue are all claimed to be
different, along with the shape and texture of the eagles on the side. Many of
these differences are not perceptible to the casual observer. Appellants make no
claim for any difference based on the plastic mold lines in the Uncle Sam figure
which are perceptible.
Our examination of the banks results in the same conclusion as that of Judge
Metzner in Etna Products, the earlier case enjoining Snyder's copyright, that the
Snyder bank is "extremely similar to the cast iron bank, save in size and material"
with the only other differences, such as the shape of the satchel and the leaves in
the eagle's talons being "by all appearances, minor." Similarities include, more
importantly, the appearance and number of stripes on the trousers, buttons on the
coat, and stars on the vest and hat, the attire and pose of Uncle Sam, the decor
on his base and bag, the overall color scheme, the method of carpetbag opening,
to name but a few. After seeing the banks and hearing conflicting testimony from
opposing expert witnesses as to the substantiality or triviality of the variations
and as to the skill necessary to make the plastic model, the court below stated:

I am making a finding of fact that as far as I'm concerned, it is practically an

exact copy and whatever you point to in this (sic) differences are so infinitesimal
they make no difference. All you have proved here by the testimony today is that if
you give a man a seven-inch model and you say I want this to come out in a five-
inch model, and he copies it, the fact that he has to have some artistic ability to
make a model by reducing the seven to the five adds something to it. That is the
only issue in this case.

Mr. Faber: No, sir.

The Court: That is the only issue. I have given you my finding of fact.
As Judge Metzner went on to say in his opinion, the appellants' plastic version
"reproduces" the cast iron bank "except that it proportionately reduces the height
from approximately eleven inches to approximately nine inches with trivial
variations." 394 F. Supp. at 1390. The court noted that appellants "went to great
pains on the hearing to prove that there were substantial differences between the
iron and the plastic articles," id. at 1391, and found that there had been no "level
of input" such as in Alva Studios, Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y.
1959) ("great skill and originality" called for in producing an exact scale reduction
of Rodin's famous "Hand of God," to museum specifications). The substance of
appellee's expert's testimony on which the district judge evidently relied was that
the variations found in appellants' plastic bank were merely "trivial" and that it
was a reproduction of the metal bank made as simply as possible for the
purposes of manufacture. In other words, there were no elements of difference
that amounted to significant alteration or that had any purpose other than the
functional one of making a more suitable (and probably less expensive) figure in
the plastic medium.
What the leading authority has called "the one pervading element prerequisite to
copyright protection regardless of the form of the work" is the requirement of
originality that the work be the original product of the claimant. 1 M. Nimmer, The
Law of Copyright 10, at 32 (1975). This derives from the fact that,
constitutionally, copyright protection may be claimed only by "authors."
U.S.Const., art. I, 8; Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S.
Ct. 279, 281, 28 L. Ed. 349, 351 (1884). Thus, "(o)ne who has slavishly or
mechanically copied from others may not claim to be an author." 1 M. Nimmer,
supra, 6, at 10.2. Since the constitutional requirement must be read into the
Copyright Act, 17 U.S.C. 1 et seq., the requirement of originality is also a
statutory one. Chamberlin v. Uris Sales Corp., 150 F.2d 512 (2d Cir. 1945). It has
been the law of this circuit for at least 30 years that in order to obtain a copyright
upon a reproduction of a work of art under 17 U.S.C. 5(h)2 that the work "contain
some substantial, not merely trivial originality . . . ." Chamberlin v. Uris Sales
Corp., supra, 150 F.2d at 513.
Originality is, however, distinguished from novelty; there must be independent
creation, but it need not be invention in the sense of striking uniqueness,
ingeniousness, or novelty, since the Constitution differentiates " authors" and
their "writings" from "inventors" and their "discoveries." Alfred Bell & Co. v.
Catalda Fine Arts, Inc., supra, 191 F.2d at 100; Runge v. Lee, 441 F.2d 579, 581 (9th
Cir.), cert. denied, 404 U.S. 887, 92 S. Ct. 197, 30 L. Ed. 2d 169 (1971). Originality
means that the work owes its creation to the author and this in turn means that
the work must not consist of actual copying. Alfred Bell & Co. v. Catalda Fine
Arts, Inc., supra, 191 F.2d at 102-03; Sheldon v. Metro-Goldwyn Pictures Corp., 81
F.2d 49, 54 (2d Cir. 1936), aff'd, 309 U.S. 390, 60 S. Ct. 681, 84 L. Ed. 825 (1940).3
The test of originality is concededly one with a low threshold in that "(a)ll that is
needed . . . is that the 'author' contributed something more than a 'merely trivial'
variation, something recognizably 'his own.' " Alfred Bell & Co. v. Catalda Fine
Arts, Inc., 191 F.2d at 103. But as this court said many years ago, "(w)hile a copy
of something in the public domain will not, if it be merely a copy, support a
copyright, a distinguishable variation will. . . . " Gerlach-Barklow Co. v. Morris &
Bendien, Inc., 23 F.2d 159, 161 (2d Cir. 1927).
Necessarily, none of these underlying principles is different in the case of
"(r)eproductions of a work of art," 17 U.S.C. 5(h), from the case of "(w) orks of
art . . .," 17 U.S.C. 5(g). The requirement of substantial as opposed to trivial
variation and the prohibition of mechanical copying, both of which are inherent in
and subsumed by the concept of originality, apply to both statutory categories.
There is implicit in that concept a "minimal element of creativity over and above
the requirement of independent effort." 1 M. Nimmer, supra, 10.2, at 36. While
the quantum of originality that is required may be modest indeed, Herbert
Rosenthal Jewelry Corp. v. Grossbardt, 436 F.2d 315, 316 (2d Cir. 1970), we are not
inclined to abandon that requirement, even if in the light of the constitutional and
statutory bases therefor and our precedents we could do so.
A reproduction of a work of art obviously presupposes an underlying work of art.
Since Mazer v. Stein, 347 U.S. 201, 218, 74 S. Ct. 460, 470, 98 L. Ed. 630, 642
(1954) (statuette of Balinese dancer copyrightable despite intended use as lamp
base), it has been established that mass-produced commercial objects with a
minimal element of artistic craftsmanship may satisfy the statutory requirement
of such a work. See also Puddu v. Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d
Cir. 1971). So, too, a toy which qualifies as a work of art such as the original Uncle
Sam mechanical bank may qualify as a "work of art" under Section 5(g). See
Rushton v. Vitale, 218 F.2d 434, 435-36 (2d Cir. 1955); Ideal Toy Corp. v. Sayco Doll
Corp., 302 F.2d 623, 624 (2d Cir. 1962). The underlying work of art may as here be
in the public domain. But even to claim the more limited protection given to a
reproduction of a work of art (that to the distinctive features contributed by the
reproducer), the reproduction must contain "an original contribution not present
in the underlying work of art" and be "more than a mere copy." 1 M. Nimmer,
supra, 20.2, at 93.
According to Professor Nimmer, moreover, "the mere reproduction of a work of art
in a different medium should not constitute the required originality for the reason
that no one can claim to have independently evolved any particular medium." Id.
at 94. See Millworth Converting Corp. v. Slifka,276 F.2d 443, 444-45 (2d Cir. 1960).
Cf. Gardenia Flowers, Inc. v. Joseph Markovitz, Inc., 280 F. Supp. 776, 781 (S.D.N.Y.
1968). Professor Nimmer refers to Doran v. Sunset House Distributing Corp., 197 F.
Supp. 940 (S.D. Cal. 1961), aff'd, 304 F.2d 251 (9th Cir. 1962), as suggesting "the
ludicrous result that the first person to execute a public domain work of art in a
different medium thereafter obtains a monopoly on such work in such medium, at
least as to those persons aware of the first such effort." 1 M. Nimmer, supra,
20.2, at 94. We do not follow the Doran case. We do follow the school of cases in
this circuit and elsewhere supporting the proposition that to support a copyright
there must be at least some substantial variation, not merely a trivial variation
such as might occur in the translation to a different medium.
Nor can the requirement of originality be satisfied simply by the demonstration of
"physical skill" or "special training" which, to be sure, Judge Metzner found was
required for the production of the plastic molds that furnished the basis for
appellants' plastic bank. A considerably higher degree of skill is required, true
artistic skill, to make the reproduction copyrightable. Thus in Alfred Bell & Co. v.
Catalda Fine Arts, Inc., supra, 191 F.2d at 104-05 n.22, Judge Frank pointed out
that the mezzotint engraver's art there concerned required "great labour and
talent" to effectuate the "management of light and shade . . . produced by
different lines and dots . . .," means "very different from those employed by the
painter or draughtsman from whom he copies. . . . " See also Millworth Converting
Corp. v. Slifka, supra (fabric designer required one month of work to give three-
dimensional color effect to flat surface). Here on the basis of appellants' own
expert's testimony it took the Unitoy representative "(a)bout a day and a half, two
days work" to produce the plastic mold sculpture from the metal Uncle Sam bank.
If there be a point in the copyright law pertaining to reproductions at which sheer
artistic skill and effort can act as a substitute for the requirement of substantial
variation, it was not reached here.
Appellants rely heavily upon Alva Studios, Inc. v. Winninger, supra, the "Hand of
God" case, where the court held that "great skill and originality (were required) to
produce a scale reduction of a great work with exactitude." 177 F. Supp. at 267.
There, the original sculpture was, "one of the most intricate pieces of sculpture
ever created" with "(i)nnumerable planes, lines and geometric patterns . . .
interdependent in (a) multi-dimensional work." Id. Originality was found by the
district court to consist primarily in the fact that "(i)t takes 'an extremely skilled
sculptor' many hours working directly in front of the original" to effectuate a
scale reduction. Id. at 266. The court, indeed, found the exact replica to be so
original, distinct, and creative as to constitute a work of art in itself. The
complexity and exactitude there involved distinguishes that case amply from the
one at bar. As appellants themselves have pointed out, there are a number of
trivial differences or deviations from the original public domain cast iron bank in
their plastic reproduction. Thus concededly the plastic version is not, and was
scarcely meticulously produced to be, an exactly faithful reproduction. Nor is the
creativity in the underlying work of art of the same order of magnitude as in the
case of the "Hand of God." Rodin's sculpture is, furthermore, so unique and rare,
and adequate public access to it such a problem that a significant public benefit
accrues from its precise, artistic reproduction. No such benefit can be imagined
to accrue here from the "knock-off" reproduction of the cast iron Uncle Sam bank.
Thus appellants' plastic bank is neither in the category of exactitude required by
Alva Studios nor in a category of substantial originality; it falls within what has
been suggested by the amicus curiae is a copyright no-man's land.
Absent a genuine difference between the underlying work of art and the copy of it
for which protection is sought, the public interest in promoting progress in the
arts indeed, the constitutional demand, Chamberlin v. Uris Sales Corp., supra
could hardly be served. To extend copyrightability to minuscule variations would
simply put a weapon for harassment in the hands of mischievous copiers intent
on appropriating and monopolizing public domain work. Even in Mazer v. Stein,
supra, which held that the statutory terms "works of art" and "reproduction of
works of art" (terms which are clearly broader than the earlier term "works of the
fine arts") permit copyright of quite ordinary mass-produced items, the Court
expressly held that the objects to be copyrightable, "must be original, that is, the
author's tangible expression of his ideas." 347 U.S. at 214, 74 S. Ct. at 468, 98 L.
Ed. at 640. No such originality, no such expression, no such ideas here appear.
To be sure, the test of "originality" may leave a lot to be desired, although it is the
only one we have, in that as one scholar has said, the originality requirement
does not perform the function of excluding commonplace matters in the public
domain from copyright status very effectively. See Comment, Copyright
Protection for Mass Produced Commercial Products: A Review of the
Developments Following Mazer v. Stein, 38 U. Chi. L. Rev. 807 (1971). In any event,
however, the articles should be judged on their own merits, id. at 823, and on
these merits appellants' claim must fail. Here as elsewhere in the copyright law
there are lines that must be drawn even though reasonable men may differ where.
Judgment affirmed.
MESKILL, Circuit Judge (dissenting) (with whom TIMBERS and VAN
GRAAFEILAND, Circuit Judges, concur):
I respectfully dissent.
In the instant case the author has contributed substantially more than a merely
trivial variation. "Any 'distinguishable variation' of a prior work will constitute
sufficient originality to support a copyright if such variation is the product of the
author's independent efforts, and is more than merely trivial." 1 Nimmer on
Copyright 10.1 at 34.2. In accord with the purposes of the copyright law to
promote progress by encouraging individual effort through copyright protection,
we should require only minimal variations to find copyrightability. The
independent sculpting of the mold for the plastic bank and the aggregated
differences in size and conformation of the figurine should satisfy this standard.
The plastic bank in question admittedly is based on a work now in the public
domain. This does not render it uncopyrightable since "(i)t is hornbook that a new
and original plan or combination of existing materials in the public domain is
sufficiently original to come within the copyright protection . . . ." Alva Studios,
Inc. v. Winninger, 177 F. Supp. 265, 267 (S.D.N.Y. 1959). The courts have repeatedly
emphasized that only a modest level of originality is necessary to be eligible for a
copyright. Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102-103 (2 Cir.
1951). See also, Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 411 (2
Cir. 1970) and Dan Kasoff, Inc. v. Novelty Jewelry Co., Inc., 309 F.2d 745, 746 (2 Cir.
1962), where this Court required only a "faint trace of originality" to support a
copyright.
Looking first to copyright cases involving sculptures, in Puddu v. Buonamici
Statuary, Inc., 450 F.2d 401, 402 (2 Cir. 1971), this Court found that where
plaintiff's employee had sculpted statuettes from scratch, even though there was
a "strong family resemblance between the copyrighted and the uncopyrighted
models, the differences suffice to satisfy the modest requirement of
originality. . . . Originality sufficient for copyright protection exists if the 'author'
has introduced any element of novelty as contrasted with the material previously
known to him." Similarly, in Blazon, Inc. v. DeLuxe Game Corp., 268 F. Supp. 416,
422 (S.D.N.Y. 1965) the court assumed a hobby horse could be copyrightable since
plaintiff could have added "unique features to the horse, enlarged it and made it
sufficiently dissimilar from defendant's horse as to render it copyrightable . . . ."
See also Royalty Designs, Inc. v. Thrifticheck Service Corp., 204 F. Supp.
702 (S.D.N.Y. 1962) (banks in shape of dogs); F. W. Woolworth Co. v. Contemporary
Arts, 193 F.2d 162 (1 Cir. 1951) (originality in shape of dog figurine). The fabric
cases likewise have found designs copyrightable with only a "very modest grade
of originality." Peter Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F. Supp. 1366,
1368 (S.D.N.Y. 1969). In the latter case, the embellishment and expansion of
purchased designs before being rolled onto fabric constituted the "slight
addition" sufficient to qualify as originality. Finally, there are also cases where no
changes were required because the process of reproduction itself required great
skill. See Alva Studios, Inc. v. Winninger, supra, where originality was found in a
detailed scaled reproduction differing only in the treatment of the rear side of the
base; see also Millworth Converting Corp. v. Slifka, 276 F.2d 443 (2 Cir. 1960)
(creation of a three dimensional effect on a flat fabric required effort and skill).
Turning to the case at bar, Judge Metzner made a factual finding that the plastic
bank embodied only trivial variations from the bank in the public domain. There is
precedent in this Circuit to support appellate reconsideration of factual findings
where the panel has the same record and no part of the decision below turned on
credibility. Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1093
(2 Cir. 1974) (per curiam). This principle should be applied to the present situation
since this Court has had the opportunity to view the exhibits. I make no claim that
the process of sculpting involved here is as complex as in Alva Studios (scaled
version of Rodin sculpture) or in Alfred Bell (mezzotint engravings of art classics).
However, those cases depended solely on difficulty of process to establish
originality, since there was no attempt to alter or improve upon the underlying
work.
The most obvious differences between the two exhibits in this case are size and
medium. While these factors alone may not be sufficient to render a work
copyrightable, they surely may be considered along with the other variations. On
the other hand, the author's reasons for making changes should be irrelevant to a
determination of whether the differences are trivial. As noted in Alfred Bell, supra,
191 F.2d at 105, even an inadvertent variation can form the basis of a valid
copyright. After the fact speculation as to whether Snyder made changes for
aesthetic or functional reasons should not be the basis of decision.
The primary variations between the two banks involve height; medium;
anatomical proportions of the Uncle Sam figure, including shape and expression
of face; design of the clothing (hat, tie, shirt, collar, trousers); detail around the
eagle figure on the platform; placement of the umbrella; and the shape and
texture of the satchel. Granting Snyder a copyright protecting these variations
would ensure only that no one could copy his particular version of the bank now
in the public domain, i. e., protection from someone using Snyder's figurine to
slavishly copy and make a mold. In Alva Studios, supra, 177 F. Supp. at 267, where
the author produced no distinctive variations of his own in reproducing the Rodin
sculpture, the court still found that the reproduction was copyrightable and that
infringement was possible; although mere resemblance would not justify a finding
of infringement where the principal elements of a design were taken from the
public domain, evidence of actual copying would support such a finding.
This approach seems quite in accord with the purpose of the copyright statute to
promote progress by encouraging individual effort through copyright protection.
The relatively low standard of originality required for copyrightability is derived
from this purpose. The objective is to progress first and, if necessary, litigate the
question of infringement later. In the meantime, the public culture benefits from
progress; the issue of who is entitled to the profits should not induce rigidity and
slowness in industries and fields naturally subject to great flux.
Accordingly, I would reverse the district court decision.
ENTERTAINMENT RESEARCH GROUP, INC., a California corporation, Plaintiff-Appellant,
v. GENESIS CREATIVE GROUP, INC., a Michigan corporation; Aerostar International,
Inc., a South Dakota Corporation, Defendants-Appellees, The Quaker Oats Company,
Defendant.

Nos.95-17123, 96-16689.
Decided: August 18, 1997
Before: D.W. NELSON and FERNANDEZ, Circuit Judges, and REA,* District Judge.Roberta L. Cairney, James Gibbons-
Shapiro, Fenwick & West, San Francisco, California, and Earl L. Bohachek, Rubenstein and Bohachek, San Francisco,
California, for plaintiff-appellant. Kirkland W. Garey, Howard & Howard, Bloomfield Hills, Michigan (Henry Chun and
Douglas P. Drayton, Robins, Kaplan, Miller & Ciresi, San Francisco, California, on the briefs), for defendant-appellee
Genesis Creative Group, Inc. Stephen W. Sommerhalter, Buchalter, Nemer, Fields & Younger, San Francisco, California,
for defendant-appellee Aerostar International, Inc. Ronald L. Yin, Limbach & Limbach, San Francisco, California, for
amicus curiae.
Entertainment Research Group, Inc. (ERG) appeals from two separate orders by the district court granting partial
summary judgment in favor of defendants Genesis Creative Group, Inc. (Genesis) and Aerostar International, Inc.
(Aerostar) and from a third order awarding attorney's fees to defendant Genesis. 1 We have jurisdiction pursuant to 28
U.S.C. 1291 and 17 U.S.C. 505. We affirm the district court's orders granting partial summary judgment, but we
vacate and remand the award of attorney's fees.

BACKGROUND

ERG designs and manufactures three-dimensional inflatable costumes that are used in publicity events, such as shopping
mall openings. The costumes are approximately eight feet tall and are worn by a person who remains inside the costume.
Various companies purchase and use these costumes to promote their products. The costumes are based upon these
companies' cartoon characters.2

ERG has manufactured and sold these walk-around inflatable costumes for the past sixteen years. Over this time, ERG
has developed techniques and designs that have resulted in high-quality, attractive, durable and comfortable inflatable
costumes. Up until the Spring of 1991, ERG was allegedly the only manufacturer utilizing these techniques. ERG is
owned by Allen Edward Ed Breed. Mr. Breed is also ERG's president and sole shareholder.

Appellee/defendant Genesis is in the business of marketing promotional and advertising devices to various companies,
including Kraft, General Mills, Quaker Oats and Pillsbury. Appellee/defendant Aerostar is a manufacturer of hot air
balloons, cold air inflatable products and cold air walk-around costumes.

In 1989, ERG and Genesis began a business relationship-a relationship that has evolved into this lawsuit. Genesis
describes the relationship as that of manufacturer (ERG) and wholesaler (Genesis). ERG describes it as a principal
(ERG)-agent (Genesis) relationship that was created by an oral contract under which Genesis was to sell exclusively ERG's
products and related repair and maintenance services on a commission basis.

Although the parties dispute who contacted whom first, we know that on February 27, 1989, Mr. Breed sent a letter to
Genesis's vice-president of sales, Glenn Bodien, outlining Mr. Breed's proposed structure for the relationship. Soon after,
ERG's inflatable costumes were being sold to Genesis's customers. By September, 1990, more than forty-eight ERG-
manufactured costumes had apparently been sold and distributed by Genesis to at least nine different companies,
representing thirteen different cartoon characters.

On September 18, 1990, ERG and Genesis entered into and signed a Confidential Disclosure Agreement. This
agreement states that Genesis shall not disclose valuable and proprietary technical information and that Genesis shall
not duplicate any of ERG's costumes.

Up until August, 1991, Genesis apparently continued to solicit customers for ERG-manufactured costumes. The parties
disagree on how their business relationship came to an end. ERG claims that Genesis secretly entered into an agreement
with Aerostar while the ERG-Genesis relationship was still alive and that Genesis supplied Aerostar with ERG-made
costumes and ERG's proprietary information so that Aerostar could enter into the inflatable costume industry and so that
Genesis could get itself a better deal through Aerostar. On its part, Genesis contends that it was forced to end the
relationship due to ERG's failure to produce and service costumes in the timely manner required by Genesis's customers.
In any event, on August 23, 1991, Genesis gave ERG written notice of the termination of all future business relations.

Shortly thereafter, Genesis apparently entered into a formal business relationship with Aerostar to sell inflatable walk-
around costumes manufactured by Aerostar to Genesis's customers. ERG claims that Genesis and Aerostar had been
meeting prior to the August, 1991 termination of the ERG-Genesis relationship. Genesis and Aerostar deny the existence
of any such secret meetings and plans.

ERG also claims that Genesis and Aerostar conspired to divert former and potential customers away from ERG to
themselves both for costume purchases and for maintenance and repair services. ERG specifically alleges that Genesis
made misrepresentations about ERG's prices and ability to provide requested services and that Genesis engaged in a
variety of other schemes designed to disrupt ERG's business relationships and to create a demand for Aerostar-
manufactured costumes.

ERG further claims that Genesis provided Aerostar with examples of ERG-manufactured costumes so that Aerostar could
learn how to manufacture the complicated and intricate costumes and so that Aerostar could copy the costumes. In
addition, ERG alleges that Aerostar employees ripped out and pasted over ERG's copyright labels in ERG-manufactured
costumes without the approval and/or knowledge of ERG. Finally, ERG claims that Genesis and Aerostar distributed
advertising materials depicting ERG-manufactured costumes without ERG's approval.

On June 30, 1992, ERG initiated this action by filing a complaint in the United States District Court for the Northern
District of California against defendants Genesis and Aerostar. A second amended complaint was filed on September 29,
1993. The second amended complaint contained the following twelve causes of action: (1) copyright infringement
against Genesis for infringing ERG's Inflatimation Elf costume; (2) copyright infringement against Genesis for
infringing ERG's Inflatimation Soldier costume; (3) breach of written contract against Genesis; (4) breach of oral
contract against Genesis; (5) copyright infringement against Aerostar for infringing ERG's derivative works; (6)
intentional interference with contract against both defendants; (7) negligent interference with contract against both
defendants; (8) intentional interference with prospective economic advantage against both defendants; (9) negligent
interference with prospective economic advantage against both defendants; (10) false designation of origin (Lanham Act)
against both defendants; (11) unfair business practices/unfair competition against both defendants; and (12) civil
conspiracy against both defendants.

On May 2, 1994, the district court granted partial summary judgment for Genesis and Aerostar on ERG's derivative
copyright infringement claim (ERG's fifth cause of action).3 See Entertainment Research Group, Inc. v. Genesis Creative
Group, Inc., 853 F.Supp. 319 (N.D.Cal.1994). The district court did so on the ground that ERG did not possess valid
copyrights in its three-dimensional inflatable costumes that ERG designed and manufactured based upon the preexisting
copyrighted two-dimensional cartoon characters.

Genesis and Aerostar thereafter filed motions for partial summary judgment as to ERG's eleven remaining causes of
action. At that hearing, ERG stipulated that it did not have any evidence to support its first and second causes of action
for copyright infringement involving the Inflatimation Elf and Inflatimation Soldier costumes (the Inflatimation claims).
On September 6, 1995, the district court issued an order granting Genesis and Aerostar's motions for partial summary
judgment, finding that ERG had not established a genuine issue of material fact as to any of its remaining causes of
action.4

Pursuant to 17 U.S.C. 505, Genesis and Aerostar subsequently filed separate motions to recover attorney's fees incurred
in defending against ERG's copyright causes of action-claims 1 and 2 (the Inflatimation claims) and claim 5 (the derivative
copyright claim). The district court denied Aerostar's request for attorney's fees in its entirety and denied Genesis's
request for attorney's fees with regard to the derivative copyright claim. However, the district court awarded attorney's
fees to Genesis in the amount of $195,759.00 for having to defend against ERG's Inflatimation claims.

The district court's calculation of attorney's fees was soon determined to be erroneous by the parties. Apparently, the
amount of the award included the attorney's fees that Genesis had incurred in defending against the derivative copyright
claim. Accordingly, ERG filed a motion to amend. On October 2, 1996, the district court issued an amended order
which lowered the award of attorney's fees to Genesis to $95,075.75. 5

STANDARD OF REVIEW

The district court's decision to grant summary judgment is reviewed de novo. See, e.g., Warren v. City of Carlsbad, 58
F.3d 439, 441 (9th Cir.1995), cert. denied, 516 U.S. 1171, 116 S.Ct. 1261, 134 L.Ed.2d 209 (1996). Viewing the evidence in
the light most favorable to the non-moving party, we must determine whether there are any genuine issues of material fact
and whether the district court correctly applied the relative substantive law. Id. The district court's interpretation of
state law is reviewed under the same de novo standard that is used to review questions of federal law. See, e.g., Salve
Regina College v. Russell, 499 U.S. 225, 231, 111 S.Ct. 1217, 1220-1222, 113 L.Ed.2d 190 (1991).

The district court's decision to award attorney's fees under the Copyright Act, 17 U.S.C. 101-1101, is reviewed for an
abuse of discretion. See, e.g., Fantasy, Inc. v. Fogerty, 94 F.3d 553, 556 (9th Cir.1996). However, [A]ny elements of
legal analysis and statutory interpretation which figure in the district court's decision are reviewable de novo. Hall v.
Bolger, 768 F.2d 1148, 1150 (9th Cir.1985). A district court's award of attorney's fees does not constitute an abuse of
discretion unless it is based on an inaccurate view of the law or a clearly erroneous finding of fact. Fantasy, 94 F.3d at
556.

DISCUSSION

The district court granted summary judgment against ERG on all twelve of ERG's causes of action. ERG has not appealed
the district court's grant of summary judgment as to claims 1 and 2-the Inflatimation claims. ERG's opening brief failed
to make any mention of the following causes of action: (1) intentional interference with contractual relations; (2)
negligent interference with contractual relations; (3) intentional interference with prospective economic advantage; and
(4) negligent interference with prospective economic advantage. In addition, ERG's opening brief provided only cursory
mention, with virtually no discussion, of ERG's Lanham Act and unfair competition/unfair business practices causes of
action.

We will not consider any claims that were not actually argued in ERG's opening brief. As we stated in Greenwood v.
FAA, 28 F.3d 971, 977 (9th Cir.1994):

We review only issues which are argued specifically and distinctly in a party's opening brief. We will not manufacture
arguments for an appellant, and a bare assertion does not preserve a claim, particularly when, as here, a host of other
issues are presented for review. As the Seventh Circuit in Dunkel stated aptly: [j]udges are not like pigs, hunting for
truffles buried in briefs.

Id. (citations omitted). Accordingly, because ERG failed to present a specific, cogent argument for our consideration
with regard to these causes of action, we will not discuss them. Id. As a result, the only issues to be addressed are: (1)
ERG's derivative copyright claim; (2) ERG's breach of contract claims; (3) ERG's civil conspiracy claim; and (4) the
award of attorney's fees. We address each of these claims independently.

I.Derivative Copyright Infringement Cause of Action

ERG alleges that Aerostar copied and infringed ERG's copyrights in the inflatable costumes that ERG designed and
manufactured based on the underlying copyrighted characters. To establish copyright infringement, the holder of the
copyright must prove both valid ownership of the copyright and infringement of that copyright by the alleged infringer.
See, e.g., North Coast Indus. v. Jason Maxwell, Inc., 972 F.2d 1031, 1033 (9th Cir.1992); Sid & Marty Krofft Television v.
McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.1977). If the plaintiff copyright holder survives the first step by
establishing that he or she owns a valid copyright, the plaintiff must then establish infringement by showing both access to
the copyrighted material on the part of the alleged infringer and substantial similarity between the copyrighted work and
the alleged infringing work. North Coast, 972 F.2d at 1033.

In the instant case, the district court granted the motions for summary judgment on the infringement claim on the ground
that ERG failed to establish that it had a valid copyright in its costumes. See Entertainment Research Group, 853
F.Supp. at 324. We agree.

A.Copyright Registration Certificates

Under the copyright laws, the registration of a copyright certificate constitutes prima facie evidence of the validity of a
copyright in a judicial proceeding commenced within five years of the copyright's first publication. 17 U.S.C. 410(c);
see also North Coast, 972 F.2d at 1033; Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 (3rd
Cir.1990); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085-86 (9th Cir.1989). A certificate of copyright registration,
therefore, shifts to the defendant the burden to prove the invalidity of the plaintiff's copyrights. Masquerade Novelty,
912 F.2d at 668; see also Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823, 832 (10th Cir.1993). An
accused infringer can rebut this presumption of validity, however. See, e.g., North Coast, 972 F.2d at 1033; Durham
Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980). To rebut the presumption, an infringement defendant must
simply offer some evidence or proof to dispute or deny the plaintiff's prima facie case of infringement. See, e.g., North
Coast, 972 F.2d at 1033; Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991).

It is undisputed that on September 23, 1993, the United States Copyright Office issued certificates of copyright
registration to ERG for its Toucan Sam, Dino, Dough Boy, Little Sprout, Cap'n Crunch, Geoffrey the Giraffe,
and Oatis Oat Square costumes. ERG argues that the district court committed a clear error of law requiring reversal by
failing to give anything but lip service to the presumption of validity for these copyrights. We disagree. ERG's
argument is based on the district court's statement that, Since Aerostar has put ERG's copyrights in dispute, ERG must
prove the validity of its copyright as a threshold issue. Entertainment Research Group, 853 F.Supp. at 321. Although a
literal reading of the district court's statement could lead one to conclude that the district court erroneously shifted the
burden of proving copyright validity back to ERG before any evidence had been considered by erroneously requiring ERG
to prove validity as a threshold issue, a reading of the entire district court order makes clear that the district court did
not improperly deny ERG of the statutory presumption of validity.

Aerostar-the alleged infringer-presented photographs and artwork of the original copyrighted figures to the district court.
These materials raised a serious question as to whether ERG's costumes based on those copyrighted characters were
sufficiently original to merit copyright protection. Such a showing is critical given our holding in North Coast that the
statutory presumption of validity can be rebutted if the alleged infringer demonstrates that the plaintiff's work is not
original but copied from another's work. North Coast, 972 F.2d at 1033; see also Masquerade Novelty, 912 F.2d at 668-
69 (stating that, Where, for example, the issue is whether the copyrighted article is original, the presumption will not be
overcome unless the defendant offers proof that the plaintiff's product was copied from other works or similarly probative
evidence as to originality.). These photographs and artwork reveal that ERG's costumes are quite similar in appearance
to the copyrighted characters the costumes are based on. Accordingly, because Aerostar had offered evidence that ERG's
costumes were not original but copied from another's work, the district court properly held that Aerostar had rebutted
the statutory presumption, and the district court properly shifted the burden of proving validity-the threshold issue for
copyright infringement lawsuits-back to ERG. See, e.g., Masquerade Novelty, 912 F.2d at 668-69; Carol Barnhart Inc. v.
Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985); Durham, 630 F.2d at 908-09 (holding that the presumption of
validity was rebutted where one look at the plaintiff's allegedly copyrightable figures revealed a complete absence of any
originality).

B.Copyrights in Derivative Works

Having discussed this initial threshold issue, we will now evaluate whether ERG's costumes are actually copyrightable.
It is undisputed that ERG's costumes are based upon two-dimensional characters that are copyrighted and owned by the
purchasers of the costumes. The Copyright Act defines a derivative work as:

[A] work based upon one or more pre-existing works, such as a[n] art reproduction or any other form in which a work
may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other
modifications which, as a whole, represent an original work of authorship, is a derivative work.

17 U.S.C. 101. Given this definition, it is clear that ERG's costumes are derivative works for purposes of the Copyright
Act.6

That ERG's costumes are derivative works is not a bar to their copyrightability, however. Section 103(a) of the Copyright
Act explicitly provides that the subject matter of copyright, as specified by Section 102, includes derivative works. 17
U.S.C. 103(a). Nevertheless, the copyright protection afforded to derivative works is more limited than it is for original
works of authorship. Specifically, Section 103(b) provides that the copyright in a derivative work extends only to the
material contributed by the author of such work, as distinguished from the preexisting material employed in the work.
17 U.S.C. 103(b); see also Russell v. Price, 612 F.2d 1123, 1128 (9th Cir.1979). Accordingly, we will now examine
whether ERG's costumes are copyrightable as derivative works.

We have not previously had occasion to provide much guidance with regard to the copyrightability of derivative works.
See Moore Pub., Inc. v. Big Sky Marketing, Inc., 756 F.Supp. 1371, 1374 (D.Idaho 1990) (looking to cases from the Second
Circuit and the Seventh Circuit for guidance on the standards to be employed in determining whether derivative works are
copyrightable). Faced with this lack of guidance, the district court turned to the Second Circuit's decision in Durham
Industries, Inc. v. Tomy Corp., 630 F.2d 905 (2d Cir.1980), as a model for determining whether ERG's derivative works
were copyrightable. See Entertainment Research Group, 853 F.Supp. at 321-22. ERG argues that the district court
should not have relied on that test since the Durham test is not the controlling law of the Ninth Circuit and since the
Durham analysis is premised on an erroneous interpretation of copyright law.

Instead of the Durham test, ERG contends that the district court should have applied the test created by a district court in
the Central District of California. Doran v. Sunset House Distributing Corp., 197 F.Supp. 940 (S.D.Cal.1961), aff'd, Sunset
House Distributing Corp. v. Doran, 304 F.2d 251 (9th Cir.1962). In Doran, we affirmed the district court's decision that a
three-dimensional, inflatable representation of Santa Claus was original and copyrightable. The district court in that case
reached its decision based on its belief that the test of copyrightability must be the form which the author has used to
express the figure, idea, or theme. Id. at 944. In other words, under the Doran district court's test, if the form of the
derivative work and the form of the underlying work-three-dimensional, two-dimensional, plastic, etc.-are sufficiently
different, then the derivative work is original enough to be copyrightable.

ERG argues that the Doran test should apply to the instant case since it has never been overturned and is, therefore, the
controlling law in this Circuit on the copyrightability of three-dimensional representations of preexisting two-dimensional
works. We disagree. In the first place, the Doran test is inapplicable to the instant circumstances since Doran involved
the copyrightability of a derivative work where the preexisting work was taken from the public domain and not
copyrighted itself. Here, on the other hand, ERG's costumes were based on preexisting works that were copyrighted and
owned by the ultimate purchasers. This difference is critical because in deciding whether to grant copyright protection to
a derivative work, courts must be concerned about the impact such a derivative copyright will have on the copyright
privileges and rights of the owner of the underlying work. See 17 U.S.C. 103(b). Indeed, the body of law regarding
derivative copyrights is designed to strike a balance between the holder of a copyright in the underlying work and the
creator of a work that is made by copying that underlying work. See, e.g., Durham, 630 F.2d at 910-11. Accordingly,
because the Doran test completely fails to take into account the rights of the holder of the copyright for the underlying
work, the Doran test should not be applied to determine the copyrightability of a derivative work that is based on a
preexisting work that is itself copyrighted.

In addition, it is not clear that we ever adopted the Doran test since our opinion affirming the district court's decision
really focused on the similarity between the Santa Claus products at issue, rather than on the different forms of the
products. See Melville B. Nimmer, Nimmer on Copyright, 2.08[C] at 2-111, 2-112 n. 136 (commenting that the Ninth
Circuit apparently relied upon the originality inherent in the graphic elements of the plaintiff's Santa Claus, rather than
on the grounds for originality stated by the district court.). In this respect, it is notable that although we quoted Doran
in Runge v. Lee, 441 F.2d 579, 581 (9th Cir.1971), for the standard for originality in copyrights, the portion of Doran that
was quoted had nothing to do with the district's court's language indicating that a change in form is sufficient for
originality purposes. Id.

In direct contrast, we are satisfied that the test developed by the Second Circuit in Durham is the proper approach for us
to apply in the instant circumstances to determine whether ERG's costumes are copyrightable as derivative works. This
test contains two prongs:

First, to support a copyright the original aspects of a derivative work must be more than trivial. Second, the original
aspects of a derivative work must reflect the degree to which it relies on preexisting material and must not in any way
affect the scope of any copyright protection in that preexisting material.

Durham, 630 F.2d at 909.

The first prong of the Durham test is in harmony with numerous decisions of this Circuit which establish that the original
aspects of a work must be more than trivial to warrant copyright protection. See, e.g., North Coast, 972 F.2d at 1033
(stating that [o]riginality is the indispensable prerequisite for copyrightability); Kamar Int'l, Inc. v. Russ Berrie & Co.,
657 F.2d 1059, 1061 (9th Cir.1981) (holding that [o]riginality is the sine qua non of copyrightability).

ERG takes issue with the second prong of the Durham test, arguing that it embodies an erroneous interpretation of the
copyright laws. We are not persuaded by this argument, as we believe that this prong is completely consistent with
Section 103(b) of the Copyright Act and is, in fact, necessary because of Section 103(b). Section 103(b) provides that:

The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as
distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the
preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration,
ownership, or subsistence of, any copyright protection in the preexisting material.

17 U.S.C. 103(b). Following the direct language of 103(b), the second prong of the Durham test is designed to ensure
that copyright protection is not given to a derivative work if doing so would necessarily affect the scope of any copyright
protection in the preexisting material.

Viewed from another perspective, this second prong of the Durham test is necessary to ensure that copyright protection is
not given to derivative works whose originality is merely trivial. Section 103(b) mandates that the copyright protection
for derivative works not affect the scope of any copyright protection in the underlying work. Copyright protection for
underlying works would be affected-and, thus, 103(b) would be violated-if derivative works without adequate originality
were given copyright protection. See, e.g., Gracen, 698 F.2d at 304-05; Durham, 630 F.2d at 910-11; Moore Pub., 756
F.Supp. at 1374. This is so because if copyright protection were given to derivative works that are virtually identical to
the underlying works, then the owner of the underlying copyrighted work would effectively be prevented from permitting
others to copy her work since the original derivative copyright holder would have a de facto monopoly due to her
considerable power to interfere with the creation of subsequent derivative works from the same underlying work.
Gracen, 698 F.2d at 305; see also Durham, 630 F.2d at 911. This conclusion finds support in our decisions in the
somewhat analogous context where we have decided not to grant copyright protection to an artist's presentation of a song-
even under an unfair competition theory-where doing so would undermine the rights of the song's copyright holder by
exposing her licensees to potential litigation. See Sinatra v. Goodyear Tire & Rubber, 435 F.2d 711, 718 (9th Cir.1970).

Our belief that the Durham test is the proper approach is furthered by the fact that the principles underlying this test have
been followed and approved of by many other courts. See, e.g., Gracen, 698 F.2d at 304-05; EFS Marketing, Inc. v. Russ
Berrie & Co., Inc., 836 F.Supp. 128, 131, 133 (S.D.N.Y.1993); Moore Pub., 756 F.Supp. at 1374; M.S.R. Imports, Inc. v.
R.E. Greenspan Co., Inc., 1983 WL 1778, *17 n. 4 (E.D.Pa.1983).

C.Application to the Instant Facts

Having concluded that the Durham analysis is the proper approach to take, we will now apply the test to the instant
circumstances.

1.Prong One: Originality

The first issue is whether ERG's costumes are sufficiently original to justify protection as derivative works. We have
explained what originality means in the context of derivative works as follows:

All that is needed to satisfy both the Constitution and the statute is that the author contributed something more than a
merely trivial variation, something recognizably his own. Originality in this context means little more than a
prohibition of actual copying. No matter how poor artistically the author's addition, it is enough if it be his own.

Sid & Marty Krofft Television, 562 F.2d at 1163 n. 5 (citations omitted); see also North Coast, 972 F.2d at 1033.

Before assessing whether ERG contributed something more than a merely trivial variation to the underlying copyrighted
characters in the creation of its costumes, one more complexity needs to be added to the mix. Although the category of
costumes has rarely been dealt with in the copyright context, it seems clear that for copyright purposes, costumes would
fall under the category of pictorial, graphic and sculptural works and would be treated as sculptural works. See 17
U.S.C. 101, 103. This fact is critical to our determination, as Section 101 of the Copyright Act states that sculptural
works of artistic craftsmanship receive copyright protection only

insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article [ordinarily
not copyrightable] shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the article.

17 U.S.C. 101.

Accordingly, any aspects of ERG's costumes that are purely functional, utilitarian or mechanical, will not be given any
copyright protection. Id.; see also Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir.1983). Moreover, any
artistic aspects of ERG's costumes will also not receive copyright protection unless they can be identified separately from,
and are capable of existing independently of, the utilitarian purpose of the costumes. 17 U.S.C. 101; see also Fabrica,
697 F.2d at 893.

Based on this statutory provision, the district court ruled that, Any differences in appearance between a derivative work
and the preexisting work which are driven primarily by a functional, utilitarian or mechanical purpose cannot be
considered when seeking artistic differences for the purpose of originality. Entertainment Research Group, 853 F.Supp.
at 322-23. ERG argues that the district court committed clear error by utilizing this functionality test-which ERG
contends should only be used to determine if a sculptural work is ultimately copyrightable-to determine whether a
derivative work is sufficiently original in the first place. In other words, ERG contends that the district court should have
first made the traditional originality determination by examining whether any aspect of the derivative works-including the
purely utilitarian aspects-created sufficient originality and then, second, used the functionality test to determine if the
artistic aspects of the derivative works were conceptually separable from the utilitarian aspects such that the costumes
could be copyrightable as sculptural works.

We disagree with ERG's analysis. In the instant circumstances, where the derivative works at issue are sculptures, it
makes no sense to include the utilitarian aspects for purposes of determining originality when it is clear, in light of 101
of the Copyright Act, that these utilitarian aspects are not copyrightable. Thus, ERG would illogically have the courts
consider the uncopyrightable elements of a derivative work in order to determine if the derivative work is ultimately
copyrightable.

A simple hypothetical may help explain how futile the approach ERG is suggesting would be. Under ERG's approach, a
court could determine that a sculptural work is sufficiently original to qualify as a derivative work even if the derivative
sculpture had absolutely no new artistic elements to it so long as the sculpture had at least one purely functional, non-
trivial element to it that the author of the derivative sculptural work contributed. At the second stage of the ERG
approach, however, the court would be forced to conclude that the derivative work was not copyrightable as a sculptural
work pursuant to 17 U.S.C. 101 since it did not possess any new, non-trivial artistic features. Under such a scenario,
the entire first step of the analysis would, therefore, have been pointless. Thus, because any utilitarian, functional or
mechanical aspects of a derivative work will not be copyrightable in the long run, see 17 U.S.C. 101, any differences in
appearance between a derivative work and the preexisting work which are not conceptually separable from any utilitarian,
functional or mechanical purposes should not be considered by a court in determining whether sufficient artistic
differences exist to constitute originality. Accordingly, the district court was correct to eliminate any such differences
from its originality analysis.

Having said this, it is now necessary to evaluate whether ERG raised a genuine issue of fact as to whether the non-
functional aspects of the ERG costumes were sufficiently original. See, e.g., North Coast, 972 F.2d at 1034 (stating that
summary judgment is appropriate where no reasonable trier-of-fact could find even trivial differences in the designs
which were claimed to be copyrightable). Addressing this very issue, the district court concluded that no reasonable
trier-of-fact could find even trivial artistic differences in design between the preexisting work and the underlying work.
Entertainment Research Group, 853 F.Supp. at 323.

We agree with the district court that any artistic differences in the costumes are merely trivial. ERG alleges that Mr.
Breed's declaration demonstrates that ERG contributed much that is recognizably its own to the costumes since Mr.
Breed had to make a number of creative decisions to enable the costumes to be manufactured successfully and since Mr.
Breed was guided by his artistic impression. The problem with ERG's argument, however, is that originality is not
present solely because Mr. Breed placed a lot of thought and effort into figuring out how to transform the two-dimensional
copyrighted characters into three-dimensional inflatable costumes. See, e.g., Feist, 499 U.S. at 352-56, 111 S.Ct. at 1291-
93; Durham, 630 F.2d at 911 (stating that a display of manufacturing skill is not independently enough to constitute
originality). Indeed, the courts and commentators seem to agree that making decisions that enable one to reproduce or
transform an already existing work into another medium or dimension-though perhaps quite difficult and intricate
decisions-is not enough to constitute the contribution of something recognizably his own. See, e.g., Nimmer, 2.08[C]
at 2-111 (stating that the mere act of converting two dimensions to three dimensions, although it creates a distinguishable
variation, may not represent a contribution of independent effort because no one can claim to have independently evolved
the idea and technique of working in three dimensions); Durham, 630 F.2d at 911 (holding that, The mere reproduction
of the underlying characters in plastic, even though [i]t undoubtedly involved some degree of manufacturing skill, does
not constitute originality); Gallery House, Inc. v. Yi, 582 F.Supp. 1294, 1297 (N.D.Ill.1984) (holding that the plaintiff
moldmaker had not added any artistic effort since he had simply converted a two-dimensional design to a three-
dimensional object).

ERG also argues that a material issue of fact exists with regard to originality due to the photographs and artwork attached
to Mr. Breed's declaration that allegedly demonstrate that the costumes involve much more than merely trivial additions
and alterations to the underlying copyrighted characters. Specifically, ERG contends that the differences between the
representations of the characters in the flat reference artwork supplied by the characters' proprietors and their
representations in the three-dimensional inflatable costumes are far from trivial since (1) the ERG costumes vary greatly
in proportions and facial expressions from the original characters and (2) the ERG costumes contain many elements, such
as the texture of the costumes and the manner in which they move which are wholly absent from the original artworks.

Viewing the three-dimensional costumes and the two-dimensional drawings upon which they are based, it is immediately
apparent that the costumes are not exact replicas of the two-dimensional drawings. Indeed, as the district court observed
with regard to the Toucan Sam costume, the proportions in the costumes are far different from those in the underlying
drawings. However, as was discussed earlier, in evaluating the originality of ERG's costumes, any differences that exist
because of functional or mechanical considerations should not be considered. The district court came to the conclusion
that these differences in proportion were solely-or at least primarily-driven by the functional considerations necessitated
by the fact that a human body must fit inside the costumes. Accordingly, the district court discounted any differences
such as proportionality that were primarily caused by functional concerns.

We agree with the district court's conclusion that the differences in form, texture and proportionality that ERG points to
as non-trivial differences all stemmed from functional considerations. Indeed, even though Mr. Breed states that he was
forced to make an artistic decision as to what changes should be made to the costumes so that the original character's
essence would not be lost, a close reading of Mr. Breed's statement reveals that this artistic decision was necessitated
solely by the functional consideration that the scale of the character does not fit the human proportion and, therefore,
must be changed so that the costumes can be functional. Accordingly, these so-called artistic differences are really
nothing more than changes necessitated by utilitarian concerns. As such, these differences were appropriately not
considered by the district court.

ERG does point to one truly artistic difference, however, as ERG claims that the facial expressions of the costumes
contain more than merely trivial differences from the facial expressions seen in the underlying drawings. Although ERG
is correct that there are some differences in these facial expressions, no reasonable trier of fact would see anything but the
underlying copyrighted character when looking at ERG's costumes. Indeed, much like the Second Circuit in Durham
concluded when looking at those three-dimensional derivative works, Tomy [i.e., ERG] has demonstrated, and the toys
[costumes] themselves reflect, no independent creation, no distinguishable variation from preexisting works, nothing
recognizably the author's own contribution that sets Tomy's figures apart from the prototypical Mickey, Donald, and Pluto
[Toucan Sam, Geoffrey the Giraffe, Pillsbury Dough Boy, etc.], authored by Disney [Kellogg's, Toys R Us, Pillsbury, etc.]
and subsequently represented by Disney or its licensees in a seemingly limitless variety of forms and media. Durham,
630 F.2d at 910. In other words, because ERG's costumes are instantly identifiable as embodiments of the underlying
copyrighted characters in yet another form, no reasonable juror could conclude that there are any non-trivial artistic
differences between the underlying cartoon characters and the immediately recognizable costumes that ERG has designed
and manufactured. Id. at 908-09.

This conclusion makes even more sense in view of the fact that ERG's customers-the companies-wanted costumes
replicating their characters. Thus, because ERG followed detailed instructions from its customers regarding exactly how
they wanted the costumes to appear, it can not be said that ERG's artistic contributions were more than merely trivial
contributions.

ERG cites our decision in North Coast for the proposition that summary judgment is inappropriate here since the issue of
whether ERG's artistic contributions are trivial is a disputed question of fact that should be reserved for the jury. See
North Coast, 972 F.2d at 1034-35 (holding that whether the differences between a print for a dress and Mondrian
paintings were non-trivial could not be determined as a matter of law at summary judgment). North Coast does not
establish that summary judgment is inappropriate, however. Indeed, under the very language of North Coast, summary
judgment in favor of a defendant is sometimes appropriate in certain copyright actions where no reasonable trier-of-fact
could find even trivial differences between the original works and the reproductions. Id. at 1034 (citing Durham for this
proposition).

The instant case is also distinguishable from the circumstances in North Coast because in North Coast, the artistic
contributions that the district court examined and found trivial were deemed to be the heart of the entire derivative work
of art at issue. Because those contributions were so crucial to the derivative work, there was a clear possibility that a
reasonable trier of fact would find the derivative works to be recognizably the derivative creator's own product. Thus, we
felt it improper for the district court to resolve the matter on summary judgment. Here, on the other hand, the claimed
artistic differences in the facial expressions of the characters are clearly not the defining aspect of the costumes. In other
words, while there may be some differences between the facial expressions represented on ERG's costumes and those in
the underlying copyrighted characters, in the context of the overall costume, these distinctions are so slight that no
reasonable trier of fact would see anything but a direct replica of the underlying characters. Therefore, while it was not
appropriate for the district court in the North Coast circumstances to determine on summary judgment that the artistic
contributions there were not more than merely trivial, it was perfectly appropriate for the district court in the instant
circumstances to rule that no reasonable trier of fact could find any non-trivial artistic differences between ERG's
costumes and the copyrighted characters the costumes were based on.

In sum, because Mr. Breed's Declaration and the photographs and artwork submitted in conjunction with his declaration
do not raise any disputed factual issue as to whether there are any non-trivial artistic differences between ERG's costumes
and the underlying copyrighted characters, the district court's grant of summary judgment was appropriate.

2.Prong 2 of the Durham Analysis

In addition to concluding that ERG did not establish sufficient originality to warrant copyright protection for its
derivative costumes, the district court also concluded that ERG failed to satisfy the second element of the Durham test
which states that derivative works are not copyrightable if they affect the scope of any copyright protection in that
preexisting material. Durham, 630 F.2d at 909. Explaining its reasoning, the district court stated that, Any
subsequent costume makers and the original copyright holders themselves would be limited by the granting of a
derivative copyright in this situation or at the very least be vulnerable to harassment. Entertainment Research Group,
853 F.Supp. at 324. Accordingly, the district court concluded that, [T]he fear of the Durham Court and this court as
well, is that ERG would have a pseudo-monopoly on all inflatable costumes depicting these characters. Id.

Given the fact that ERG's costumes are so similar to the well-known copyrighted characters that they are based upon, the
district court was correct to conclude that granting ERG a copyright in its costumes would have the practical effect of
providing ERG with a de facto monopoly on all inflatable costumes depicting the copyrighted characters also in ERG's
costumes. Indeed, if ERG had copyrights for its costumes, any future licensee who was hired to manufacture costumes
depicting these characters would likely face a strong copyright infringement suit from ERG. Thus, in the instant
circumstances, much like in other cases discussing this very proposition, see, e.g., Gracen, 698 F.2d at 304-05; Durham,
630 F.2d at 910; Moore Pub., 756 F.Supp. at 1374, the district court was correct to deny copyright protection to ERG's
derivative works on the ground that the rights of the holder of the underlying copyrighted characters would be affected.

In addition, because no one can claim to have independently evolved any particular medium or form and to, thus, corner
the market on such a medium or form of expression, see Nimmer 2.08[C] at 2-112, it would be wrong to grant ERG a
copyright in its costumes.
Accordingly, for these reasons also, the district court was correct to grant summary judgment against ERG. 7

II.Breach of Oral Agency Contract Cause of Action

One of ERG's most fundamental allegations is that Genesis owed ERG a fiduciary duty of loyalty and that Genesis
breached this duty by secretly working with Aerostar to compete with ERG.8 ERG claims that Genesis owed ERG this
duty due to the existence of an agency contract under which Genesis allegedly agreed to act as ERG's exclusive agent. It
is undisputed that no written agency contract existed. Instead, ERG argues that an oral contract existed. 9

The district court granted summary judgment against ERG on its claim for breach of an oral contract on the ground that
ERG failed to establish any evidence of a final agreement, either in writing or in the conduct of the parties. See 1 B.
Witkin, Summary of California Law, Contracts 128, 133, 136, 145 (9th ed.1988) (stating that preliminary negotiations
will result in a binding contract when all of the terms are definitely understood and agreed upon).

In light of this standard requiring a final agreement, and in light of the evidence presented in the record, we affirm the
district court's ruling that ERG failed to raise a genuine issue of fact suggesting the existence of an oral contract creating
an agency relationship. ERG pointed to the following pieces of evidence as support for its claim that such an agency
relationship existed by virtue of an oral contract: (1) the fact that the parties did over $750,000 in business over a two-
year period; (2) the July 2, 1990 letter written by Genesis to Mr. Breed and referred to as the Deal Point Memorandum;
(3) the use of the word commission in that letter and in the subsequent termination letter of August 23, 1991; and (4)
the Confidential Disclosure Agreement signed by Genesis employees. We are not persuaded by any of these arguments.

Beginning with ERG's first piece of evidence, the mere fact that Genesis and ERG engaged in various business dealings
involving approximately $750,000 in sales does not compel the conclusion that the parties had reached a final agreement.
Indeed, although it is true that common sense dictates that some type of agreement must have existed between ERG and
Genesis since so much money changed hands, common sense also tells us that this fact reveals absolutely nothing as to
what kind of relationship existed between the two parties and as to whether Genesis had agreed to be the exclusive agent
for ERG.

The Deal Point Memorandum sent from Mr. Bodien of Genesis to Mr. Breed of ERG that ERG claims is the embodiment
of the final agreement between the two parties also does not further ERG's argument. 10 This Deal Point Memorandum
expressly states that, The enclosed information is in regards to the contract which we have been discussing.
Accordingly, at this point in time-July 2, 1990-it is clear that no final contract had yet been entered into. This fact alone
refutes ERG's first argument that an agency contract can be implied from the fact that ERG and Genesis were doing
business together, as it is clear that though the first ERG-Genesis sales began in February of 1989, in July of 1990, there
was still no contract.

Moreover, the Deal Point Memorandum goes on to state that, Some of the items we aren't real clear on what you meant,
so if you could please review and fill us in. No reasonable trier of fact could read this sentence as meaning anything
other than that at the time of its writing, the parties were still discussing the terms of the contract and wanted some
clarification before any final agreement would be reached. Thus, contrary to ERG's assertions, the so-called Deal Point
Memorandum can not be considered to constitute the required final agreement between the parties.

This conclusion is buttressed by subsequent communications between the parties. On September 7, 1990, having
received no reply from Mr. Breed to the request quoted above, Mr. Bodien sent Mr. Breed another letter indicating that,
[T]o date nothing has happened regarding the proposed contract between ERG and Genesis. Mr. Breed's letter in
response to this letter from Mr. Bodien concedes that the Deal Point Memorandum did not finalize any contract, stating
that, I am very reluctant, and have been since the beginning, to enter into an agreement with a company that primarily
represents itself and not ERG. Thus, the evidence in the record beyond question refutes ERG's claim that a final
agreement was reached as of July 2, 1990 (the date of the Deal Point Memorandum).

The fact that the Deal Point Memorandum and the August 23, 1991 termination letter sent to Mr. Breed by Mr. Dykstra
of Genesis both used the word commission also does not demonstrate that Genesis and ERG had entered into an agency
contract. Though ERG had proposed a 20-percent commission structure, Genesis introduced unrefuted evidence into the
record establishing that Genesis never agreed to accept such a commission structure, despite the inclusion of the word
commission in these two letters. Indeed, it is clear from the record that Genesis's markup, or commission, on all of
the sales involving ERG's costumes ranged from 22 to 87 percent. Accordingly, it is quite a stretch for ERG to argue that
the mere use of the word commission in these two letters is the smoking gun establishing that Genesis had in fact agreed
to the final terms of a contract with ERG.

The Confidential Disclosure Agreement signed by Genesis employees also does not substantiate ERG's claim that an
agency contract had been entered into. Indeed, a close reading of this agreement reveals that it actually supports
Genesis's position that no agency contract existed. Specifically, the agreement states that it is to be signed [f]or the sole
purpose of your evaluation of the propriety of entering into more formal arrangements and agreements. Hence, the
disclosure agreement actually provides evidence that a final agency contract had not, at least at that point-September 18,
1990-been entered into yet.

In sum, because ERG failed to introduce any evidence suggesting that a final agreement was reached between ERG and
Genesis, no reasonable juror could conclude that any binding agency agreement existed between ERG and Genesis. As a
result, because there was no oral agency contract to be breached, it was perfectly appropriate for the district court to rule
that ERG's claim for breach of an oral contract must fail as a matter of law.

III.Breach of Confidentiality Cause of Action

ERG's third cause of action is based on its belief that Genesis violated the parties' Confidential Disclosure Agreement by
disclosing confidential information to Aerostar regarding the design, manufacture and pricing of ERG's inflatable
costumes and component parts.11

California case law recognizes a cause of action in tort for breach of confidence. See, e.g., Faris v. Enberg, 97
Cal.App.3d 309, 321, 158 Cal.Rptr. 704 (1979). This tort is based upon the concept of an implied obligation or contract
between the parties that confidential information will not be disclosed. See, e.g., Tele-Count Eng'rs, Inc. v. Pacific Tel. &
Tel. Co., 168 Cal.App.3d 455, 462, 214 Cal.Rptr. 276 (1985); see also Landsberg v. Scrabble Crossword Game Players, Inc.,
736 F.2d 485, 489 (9th Cir.1984). In other words, this cause of action recognizes an obligation in law where in fact the
parties made no promise. It is not based upon apparent intentions of the involved parties; it is an obligation created by
law for reasons of justice. Fink v. Goodson-Todman Enterprises, Ltd., 9 Cal.App.3d 996, 1010, 88 Cal.Rptr. 679 (1970)
(citation omitted).

To prevail on a claim for breach of confidence under California law, a plaintiff must demonstrate that: (1) the plaintiff
conveyed confidential and novel information to the defendant; (2) the defendant had knowledge that the information
was being disclosed in confidence; (3) there was an understanding between the defendant and the plaintiff that the
confidence be maintained; and (4) there was a disclosure or use in violation of the understanding. See, e.g., Aliotti v. R.
Dakin & Co., 831 F.2d 898, 903 (9th Cir.1987) (citing Tele-Count Eng'rs, 168 Cal.App.3d at 462-66, 214 Cal.Rptr. 276
(1985)).

Information need not be protectable either as a trade secret, see Self Directed Placement Corp. v. Control Data Corp.,
908 F.2d 462, 465-67 (9th Cir.1990), or by copyright law, see Tele-Count Eng'rs, 168 Cal.App.3d at 462-66, to be the
subject of a breach of confidentiality claim. However, the information disclosed must be confidential and novel to
warrant protection. Id. 168 Cal.App.3d at 462; see also Faris, 97 Cal.App.3d at 322-23. Accordingly, the key to ERG's
breach of confidence claim is whether the information conveyed to Genesis by ERG was confidential and novel.

We affirm the district court's grant of summary judgment on this cause of action because-even assuming that ERG can
meet all of the other elements-ERG can not establish that it conveyed any confidential and novel information to Genesis.
ERG and Genesis began their relationship-whatever it may have been-at some time in 1989. It is undisputed that by
that time, ERG had already placed several of its inflatable costumes on the market through its previous sales to assorted
customers. After Genesis began to sell ERG's costumes to the customers Genesis located, ERG did not require any of
these purchasers to execute non-disclosure agreements. Accordingly, it can be presumed that in all of its sales prior to
Genesis's arrival into the picture, ERG likewise did not require any type of non-disclosure agreement to be signed by the
purchasers. ERG has not offered any evidence suggesting otherwise, and in fact, there is substantial evidence indicating
that ERG never took any steps to prevent other manufacturers from looking inside ERG's costumes and reverse-
engineering them.

The absence of any non-disclosure agreements entered into by these previous purchasers is dispositive of the instant
breach of confidence claim. In Aliotti, 831 F.2d at 903, we held that the plaintiff could not have conveyed any
confidential information to the defendant concerning her products for the express reason that three of the dolls in
question-the products at issue-were already on the market. Because no confidential information was conveyed, we
granted summary judgment there against the plaintiff on her breach of confidence cause of action. Likewise, in the
instant case, we affirm the district court's grant of summary judgment to Genesis and Aerostar since because ERG's
costumes were already on the market before Genesis became involved, any design or manufacturing information that
ERG may have disclosed to Genesis was not confidential as a matter of law. See id. Thus, even though the Disclosure
Agreement states that the information conveyed was confidential, as a matter of law, this information was actually not
confidential. Id.

In this regard, it is important to note that reverse-engineering is perfectly legal in a product not protected by a patent.
See, e.g., Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156-58, 109 S.Ct. 971, 980-81, 103 L.Ed.2d 118
(1989); Chicago Lock Co. v. Fanberg, 676 F.2d 400, 404-05 (9th Cir.1982). Accordingly, by not requiring the purchasers
of its costumes to sign non-disclosure agreements, ERG gave up any ability it may have had to claim that the
manufacturing and design information disclosed to Genesis was confidential in nature.

In addition to this claim that Genesis disclosed confidential information about ERG's manufacturing and design
processes, ERG also argues that Genesis breached the confidence it owed to ERG by disclosing to Aerostar the prices that
purchasers were paying for ERG-manufactured costumes. We also reject this argument on the ground that such
information was not confidential. In the first place, the prices allegedly improperly disclosed were the prices that
Genesis-not ERG-charged the purchasers. Thus, the price information was, if confidential at all, Genesis's confidential
information-not ERG's. In addition, price information is not covered in the definition of Information detailed in the
Disclosure Agreement, so Genesis technically would not have violated the Disclosure Agreement by disclosing any pricing
information.

For the forgoing reasons, the district court's grant of summary judgment to defendants on ERG's breach of confidence
cause of action was correct. Although ERG argues that the question of whether the information conveyed by ERG to
Genesis was confidential should have been left for the jury, this contention is without merit since any information ERG
conveyed to Genesis was not confidential as a matter of law. See Aliotti, 831 F.2d at 902-03.

IV.Civil Conspiracy Cause of Action

ERG's final cause of action alleges that Genesis and Aerostar are liable to ERG as co-conspirators under a civil conspiracy
theory. The district court granted summary judgment against ERG on this claim on the ground that in the instant
circumstances, ERG could not state such a cause of action under California law.

Under California law, there is no separate and distinct tort cause of action for civil conspiracy. See, e.g., Applied
Equipment Corp. v. Litton Saudi Arabia Ltd., 7 Cal.4th 503, 28 Cal.Rptr.2d 475, 480, 869 P.2d 454, 459 (1994) (stating
that, Conspiracy is not an independent tort; it cannot create a duty or abrogate an immunity. It allows tort recovery
only against a party who already owes the duty and is not immune from liability based on applicable substantive tort law
principles.) (citing Doctors' Co. v. Superior Court, 49 Cal.3d 39, 260 Cal.Rptr. 183, 775 P.2d 508 (1989)); see also 5 B.
Witkin, Summary of California Law, Torts 44 (9th ed.1988) (stating that, Strictly speaking, however, there is no
separate tort of civil conspiracy, and there is no civil action for conspiracy to commit a recognized tort unless the wrongful
act itself is committed and damage results therefrom.).

Accordingly, regardless of whether Genesis and Aerostar formed such a conspiracy, in order for ERG to have a valid civil
conspiracy cause of action, there must be another tort upon which ERG could base its conspiracy claim. Id. Although
ERG attempts to argue that it is enough for ERG to simply have alleged underlying causes of action in its complaint,
merely alleging underlying tort causes of action is clearly insufficient to support a conspiracy cause of action. See Applied
Equipment, 28 Cal.Rptr.2d at 478, 869 P.2d at 457. Thus, because we have decided to affirm the district court's grant of
summary judgment as to all of the other tort causes of action, summary judgment is also appropriate for ERG's civil
conspiracy claim since no underlying tort exists.

V.The Award of Attorney's Fees to Genesis

On October 2, 1996, the district court issued an amended order awarding Genesis $95,075.75 in attorney's fees incurred in
defending against ERG's first and second causes of action, the Inflatimation claims. ERG appeals this award on two
grounds: (1) the district court committed clear error by awarding any attorney's fees to Genesis since ERG's Inflatimation
claims were properly brought and since Genesis was an admitted infringer; and (2) the district court's award of
$95,075.75 was an unreasonable amount and, therefore, an abuse of discretion.

A.Appropriateness of Attorney's Fees Award to Genesis

We have established that an award of attorney's fees to a prevailing defendant that furthers the underlying purposes of
the Copyright Act is reposed in the sound discretion of district courts. Fantasy, 94 F.3d at 555. Moreover, [S]uch
discretion is not cabined by a requirement of culpability on the part of the losing party. Id.

Within this framework, district courts are given wide latitude to exercise equitable discretion. See generally, Fogerty
v. Fantasy, Inc., 510 U.S. 517, 114 S.Ct. 1023, 127 L.Ed.2d 455 (1994). Some of the factors that can affect a district court's
decision are: (1) the degree of success obtained; (2) frivolousness; (3) motivation; (4) the objective unreasonableness of
the losing party's factual and legal arguments; and (5) the need, in particular circumstances, to advance considerations of
compensation and deterrence. Id. at 534 n. 19, 114 S.Ct. at 1033 n. 19; see also Jackson v. Axton, 25 F.3d 884, 890 (9th
Cir.1994).

In the instant case, the district court decided to exercise this discretion by denying recovery of attorney's fees to both
Aerostar and Genesis for defending against ERG's derivative copyright claim on the ground that the legal issues were quite
novel and ERG's arguments quite plausible. In direct contrast, the district court held that Genesis should be awarded
attorney's fees for defending against ERG's two copyright causes of action based on the Inflatimation characters since it
was objectively unreasonable for ERG to have maintained those claims for almost three years without any evidentiary
basis.

ERG argues that the district court was incorrect to award these attorney's fees since ERG's Inflatimation claims were
properly brought and since Genesis admitted to wrongdoing. The record does not support ERG's contention that
Genesis admitted to wrongdoing, however. Indeed, although Genesis's opposition memorandum to ERG's September,
1992 preliminary injunction motion did acknowledge that Genesis employees had distributed advertising materials
containing pictures of ERG-manufactured costumes-the basis for the Inflatimation claims-Genesis soon cleared up any
confusion by stating that the only brochures it ever distributed depicting ERG costumes were done with the full
authorization of Mr. Breed, the president and sole shareholder of ERG.

ERG's contention that Genesis was an admitted infringer is especially hard to believe given the fact that at the May 11,
1995 hearing on Genesis and Aerostar's motions for summary judgment, ERG did not even try to argue for the validity of
its first and second causes of action. Quite to the contrary, ERG's counsel candidly conceded that ERG had no evidence
whatsoever to substantiate its claims of copyright infringement of the Inflatimation Elf and Soldier costumes.

ERG attempts to justify its retention of these claims on the ground that it would have been legal malpractice for its counsel
to remove such perfectly valid claims from the complaint. Given the fact that ERG had no evidence at all to support these
claims-even after three years and numerous depositions-it would hardly have been legal malpractice to drop such claims.
In fact, ERG's counsel really should not have even included the claims in the first place. Thus, this argument does not
convince us that the award of attorney's fees was not warranted. See Hughes v. Novi American, Inc., 724 F.2d 122, 125
(Fed.Cir.1984) (stating that the fact that a plaintiff's lawyer knows that the plaintiff's copyright claims are not valid is a
factor meriting an award of attorney's fees).

Therefore, because the evidence in the record reveals that ERG never had any evidence to support its Inflatimation claims,
the district court properly found that it was objectively unreasonable for ERG to have maintained these claims.
Accordingly, the district court did not err in deciding to award attorney's fees to Genesis as the prevailing party. See, e.g.,
Fantasy, 94 F.3d at 560 (holding that, Since the reasons given by the district court in this case are well-founded in the
record and are in keeping with the purposes of the Copyright Act, the court acted within its discretion in awarding a
reasonable attorney's fee); Diamond v. Am-Law Pub. Corp., 745 F.2d 142, 148 (2d Cir.1984) (holding that where the
plaintiff's copyright infringement claim was without a reasonable legal basis, an award of attorney's fees to the defendants
was a proper exercise of judicial discretion).

B.Reasonableness of the Amount of Attorney's Fees Awarded

It is well-established law that a party entitled to attorney's fees as a prevailing party on a particular claim, but not on other
claims in the same lawsuit, can only recover attorney's fees incurred in defending against that one claim or any related
claims. See, e.g., Hensley v. Eckerhart, 461 U.S. 424, 434-35, 103 S.Ct. 1933, 1939-40, 76 L.Ed.2d 40 (1983); Ackerman
v. Western Elec. Co., Inc., 860 F.2d 1514, 1520 (9th Cir.1988). Indeed, as the Supreme Court commented in Hensley:

In some cases a plaintiff may present in one lawsuit distinctly different claims for relief that are based on different facts
and legal theories. In such a suit, even where the claims are brought against the same defendants counsel's work on one
claim will be unrelated to his work on another claim The congressional intent to limit awards to prevailing parties
requires that these unrelated claims be treated as if they had been raised in separate lawsuits, and therefore no fee may be
awarded for services on the unsuccessful claim.

Hensley, 461 U.S. at 434-35, 103 S.Ct. at 1940; see also Smith v. Robinson, 468 U.S. 992, 1006-07, 104 S.Ct. 3457, 3465-
66, 82 L.Ed.2d 746 (1984); Schwarz v. Sec. of Health & Human Services, 73 F.3d 895, 903 (9th Cir.1995) (affirming the
district court's decision to refuse to award fees incurred on claims for which attorney's fees were not available where the
course and conduct about which she [plaintiff] complained [in these other claims] were entirely distinct and separate
from the claims upon which fees were awarded).

In the instant case, ERG's second amended complaint raised twelve causes of action. Exercising its discretion, the
district court decided that attorney's fees should only be awarded to Genesis for those fees Genesis incurred in defending
against ERG's two copyright claims based on the Inflatimation Elf and Soldier costumes. Those two copyright claims
alleged that Genesis employees had distributed to third parties advertising materials and brochures depicting ERG-made
costumes without ERG's authorization or consent. The crux of these claims, therefore, was whether such unauthorized
distributions ever took place. The crux of the overall litigation and the other causes of action, on the other hand-besides
the derivative copyright infringement claim-was whether an agency relationship existed between Genesis and ERG. In
addition, all of the other causes of action-except for the derivative copyright claim-involved completely different legal
theories and questions. Further, the mere fact that the Inflatimation claims were a part of this overall case and involved
the same parties does not mean that these claims arose from the same course and conduct as the other claims. See
Schwarz, 73 F.3d at 903. As should be readily apparent, therefore, the Inflatimation claims presented distinctly
different claims for relief that are based on different facts and legal theories from the other causes of action in the overall
litigation. See Hensley, 461 U.S. at 434, 103 S.Ct. at 1940. Accordingly, under the rule requiring segregation of
attorney's fees, id. at 434-35, 103 S.Ct. at 1939-40, the district court should not have awarded Genesis any attorney's fees
incurred in doing work on these other claims.

The district court's original order regarding attorney's fees and its amended order reflect the district court's awareness
of these principles. The district court even noted that it had the discretion to ask Genesis to submit its detailed time
records or original bills so that the appropriate segregation could occur. The district court declined to impose such a
requirement in the instant circumstances, however. Instead, the district court relied exclusively on the declaration
submitted by Genesis's counsel detailing the hours spent on the Inflatimation claims to conclude that $95,075.75 in
attorney's fees had been incurred in defending against the Inflatimation claims.

The Supreme Court has detailed a district court's obligations pursuant to the requirement that attorney's fees be awarded
only for time spent on allowable claims as follows:

There is no precise rule or formula for making these determinations. The district court may attempt to identify specific
hours that should be eliminated, or it may simply reduce the award to account for the limited success. The court
necessarily has discretion in making this equitable judgment. This discretion, however, must be exercised in light of the
considerations we have identified.

Hensley, 461 U.S. at 436-37, 103 S.Ct. at 1941. In line with the Supreme Court's directive, we have held that a district
court can abuse its discretion in certain circumstances by not requiring the party requesting attorney's fees to submit any
materials besides summaries of the time expended to litigate a matter. See Intel v. Terabyte Int'l, Inc., 6 F.3d 614, 623
(9th Cir.1993). Given the instant circumstances, we feel that the district court abused its discretion by concluding that
the summaries submitted in conjuction with the declaration of Genesis's counsel were sufficient to determine exactly how
many hours Genesis spent solely defending against the Inflatimation claims. Indeed, in these circumstances, we believe
that the district court erred in not requiring Genesis to submit its original time records and billing statements so that
ERG-and the district court-could determine whether the fees being claimed were truly for time spent in defending against
the Inflatimation claims. See Intel, 6 F.3d at 623.

In making its determination that $95,075.75 should be awarded as attorney's fees to Genesis for defending against the
Inflatimation claims, the district court relied on the declarations submitted by Genesis's attorney and the billing
summaries submitted in conjunction therewith. Genesis provided the district court with one chart summarizing all of the
time spent and the fees incurred in defending against all three of ERG's copyright claims-the two Inflatimation claims and
the derivative copyright claim-and with a second chart summarizing the time spent exclusively on the Inflatimation
claims. According to these summaries, over $70,000 in legal fees were incurred by Genesis in defending solely against
the Inflatimation claims from September, 1992 to September, 1993. Given the facts surrounding this case, this amount is
so surprising that the district court abused its discretion by not requiring Genesis to submit its original time records and
billing statements so that the district court could determine if the claimed attorney's fees were incurred solely for the
Inflatimation claims and not for other unrelated causes of action.

In September, 1992, Genesis told ERG that regardless of whether the unauthorized distributions complained of in ERG's
Inflatimation claims had ever taken place, such allegedly violative acts would no longer occur since all of Genesis's
advertising materials containing the allegedly unauthorized depictions of ERG-made costumes had been exhausted.
Thus, to Genesis, the issue had become moot by this time. Based on this view, Genesis informed ERG that it would
stipulate to the fact that ERG would no longer be harmed-if ERG had ever been-by such distributions. Accordingly, by
September, 1992, most of the force behind ERG's two Inflatimation copyright claims had all but disappeared. That this is
true is further evidenced by the fact that ERG stopped pursuing these claims after its motion for a preliminary injunction
was taken off calendar by the district court on September 17, 1992 on the ground that there was no threat of further harm
to ERG from such distributions.12

Despite this turn of events, ERG still included these two claims in its subsequently filed first and second amended
complaints. As a result, Genesis deemed it necessary-out of an appropriate abundance of caution-to prepare for the
possibility that ERG would once again attempt to vigilantly prosecute these claims at some point. Given the fact that the
Inflatimation claims had lost most of their force since ERG would no longer suffer any such harm, however, it is clear that
by September, 1992, there was no real reason for Genesis to conduct anything more than cursory legal and factual
preparations regarding these two Inflatimation claims. Consequently, we are skeptical that Genesis could have spent
over $70,000 in legal fees on these two claims from September, 1992 to September, 1993.

Genesis's claimed $70,000 in legal fees incurred post-September, 1992 is also notable due to the fact that these two
copyright claims involved very simple legal and factual issues. Indeed, as was mentioned before, the entire Inflatimation
claims revolved around the simple and easily discoverable-especially for Genesis-factual issue of whether Genesis
employees had distributed any advertising materials depicting ERG's costumes without ERG's authorization. Extensive
discovery was not necessary to answer this question. Nor was extensive travel necessary. Of even more import, by
September of 1992, Genesis had all the information it needed-it knew that the materials had been distributed at one time,
and it knew that they were no longer being distributed. Accordingly, Genesis's claim that it spent over $70,000 in legal
fees on these claims alone after September, 1992 should have at least raised some suspicions such that the district court
should have required Genesis to submit its original billing records.

These suspicions should have been heightened even more by a comparison of this $70,000 figure with the amount of
attorney's fees that Genesis claimed it expended in defending against the derivative copyright infringement suit. As our
earlier discussion reveals, the derivative copyright claim involved infinitely more complex and intricate factual and legal
issues than ERG's two Inflatimation copyright claims. Indeed, it is principally for this reason that the district court
decided not to award any attorney's fees at all to Genesis or Aerostar for defending against the derivative copyright claim,
even though both parties were statutorily entitled to such fees.

Given this context, it should come as quite a surprise that, according to the prepared declaration and billing summaries
submitted by Genesis to the district court, the entire amount of attorney's fees incurred by Genesis in defending against
the derivative copyright action was only $43,343.75. In other words, after September, 1992-by which time the
Inflatimation copyright claims had really lost all of their force and legitimacy-Genesis apparently spent almost twice as
much money defending against the unsubstantiated Inflatimation copyright claims as it ever expended for its defense of
the novel and complex derivative copyright lawsuit.

In light of the forgoing, the district court abused its discretion by not requiring Genesis to submit its original time records
and billing statements. Absent such records and absent a summary of the total amount of attorney's fees incurred by
Genesis in defending against all of ERG's causes of action between September, 1992 and September, 1993, the district
court could not properly ensure that the attorney's fees it was granting to Genesis were solely for fees related to the
Inflatimation copyright claims. In sum, because this overall litigation involved numerous other claims for which
attorney's fees were not awarded-almost all of which contained more complicated factual and legal questions than the
Inflatimation copyright claims-and because the amount of attorney's fees Genesis claimed were incurred to defend solely
against the Inflatimation claims was so high, the district court abused its discretion by not requiring the submission of
more detailed billing records. See Intel, 6 F.3d at 623. As a result, we vacate the district court's award of $95,075.75 in
attorney's fees to Genesis and remand the case to the district court for further consideration. 13

CONCLUSION

For the forgoing reasons, we affirm the district court's orders granting summary judgment in favor of Genesis and
Aerostar on all twelve of ERG's causes of actions. However, we vacate and remand the district court's award of attorney's
fees to Genesis.

AFFIRMED in part, VACATED in part, and REMANDED.

 Ferdinand Pickett, Plaintiff-Appellant, Cross-Appellee,
v.
Prince, Defendant-Appellee, Cross-Appellant.

Nos. 99-2770 and 99-2843

In the United States Court of Appeals For the Seventh Circuit

Argued February 18, 2000

Decided March 14, 2000

Appeals from the United States District Court for the Northern District of Illinois, Eastern Division. No. 94 C
4740-- Rebecca R. Pallmeyer & Milton I. Shadur, Judges.

Before Posner, Chief Judge, and Bauer and Manion, Circuit Judges.

Posner, Chief Judge.

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1
The appeal by Ferdinand Pickett, plaintiff in the district court, presents us with an issue concerning
copyright in derivative works, while the cross-appeal, by the defendant, presents a procedural issue.
The defendant, identified only as "Prince" in the caption of the various pleadings, is a well-
known popular singer whose name at birth was Prince Rogers Nelson, but who for many years
performed under the name Prince (which is what we'll call him) and since 1992 has referred to himself
by an unpronounceable symbol reproduced as Figure 1 at the end of this opinion. (See generally "The
Independent, Unofficial and Uncensored Magazine Exploring the Artist Formerly Known as Prince,"
<http://www.uptown.se/>.) The symbol (which rather strikingly resembles the Egyptian hieroglyph
ankh, see Richard H. Wilkinson, Symbol & Magic in Egyptian Art 159, 169 (fig. 128) (1994), but the
parties make nothing of this, so neither shall we) is his trademark but it is also a copyrighted work of
visual art that licensees of Prince have embodied in various forms, including jewelry, clothing, and
musical instruments. Although Prince did not register a copyright of the symbol until 1997, the plaintiff
concedes that Prince obtained a valid copyright in 1992, registration not being a precondition to
copyright protection, 17 U.S.C. sec. 408(a), though it's a precondition to a suit for copyright
infringement. sec. 411(a); Raquel v. Education Mgmt. Corp., 196 F.3d 171, 176 (3d Cir. 1999). Actually
the original copyright was not obtained by him, but he is the assignee, and the assignment expressly
granted him the right to sue for infringement of the copyright before the assignment.
2
In 1993 the plaintiff made a guitar (Figure 2) in the shape of the Prince symbol; he concedes that it is a
derivative work within the meaning of 17 U.S.C. sec. 101 ("a work based upon one or more preexisting
works, such as 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. A work consisting of editorial revisions, annotations,
elaborations, or other modifications which, as a whole, represent an original work of authorship, is a
'derivative work'"). The plaintiff claims (truthfully, we assume for purposes of the appeal) to have shown
the guitar to Prince. Shortly afterwards Prince appeared in public playing a guitar quite similar to the
plaintiff's (Figure 3).

3
The plaintiff brought this suit for copyright infringement in 1994, but it languished for years in the
district court. In January 1997 Prince counterclaimed for infringement of the copyright on his symbol,
arguing (because he had not yet registered his copyright--indeed it hadn't even been assigned to him
yet) that in 1992 Warner Brothers had registered a copyright of the symbol in connection with a record
of Prince's music. Prince was mistaken; the copyright was of the music, not of the symbol, although the
symbol appeared on the album cover. In any event Prince had no standing to enforce someone else's
 copyright--so that, if only Warner Brothers held a copyright on the Prince symbol, Prince would have no
defense against Pickett's suit for infringement (or at least would not have the defense that he
successfully asserted in the district court), as well as no basis for a counterclaim. In July 1997, however,
on the Monday following the third anniversary of Pickett's suit (which fell on a Saturday), Prince filed an
amended counterclaim for infringement, claiming that it was his own, not Warner Brothers', copyright
that Pickett's guitar infringed; for between January and July Prince had obtained the copyright by
assignment and had registered it. The district court (Judge Shadur) held that the amended
counterclaim, which superseded the original one, did not relate back to the original counterclaim
because it did not arise out of the same copyright, and so it was barred by the three-year statute of
limitations for claims of copyright infringement. 17 U.S.C. sec. 507(b). Later the suit was transferred to
Judge Pallmeyer, who on Prince's motion for summary judgment dismissed Pickett's claim on the ground
that he had no right to make a derivative work based on the Prince symbol without Prince's consent,
which was never sought or granted. 52 F. Supp. 2d 893 (N.D. Ill. 1999).

4
Pickett claims the right to copyright a work derivative from another person's copyright without that
person's permission and then to sue that person for infringement by the person's own derivative work.
Pickett's guitar was a derivative work of the copyrighted Prince symbol, and so was Prince's guitar.
Since Prince had (or so we must assume) access to Pickett's guitar, and since the two guitars, being
derivatives of the same underlying work, are, naturally, very similar in appearance, Pickett has-- if he is
correct that one can copyright a derivative work when the original work is copyrighted by someone else
who hasn't authorized the maker of the derivative work to copyright it--a prima facie case of
infringement. Wildlife Express Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 508 (7th Cir. 1994); Procter
& Gamble Co. v. Colgate- Palmolive Co., 199 F.3d 74, 77 (2d Cir. 1999) (per curiam); Castle Rock
Entertainment, Inc. v. Carol Publishing Group, Inc., 150 F.3d 132, 137 (2d Cir. 1998); Twin Peaks
Productions, Inc. v. Publications International, Ltd., 996 F.2d 1366, 1372 (2d Cir. 1993); see also 2 Paul
Goldstein, Copyright: Principles, Law and Practice sec. 7.2.1, p. 8 (1989) ("the fact that the defendant
had access to the plaintiff's work and that the defendant's work is similar to the plaintiff's can form the
basis for an inference that the defendant copied her work from the plaintiff's work"). Pickett must, he
concedes, show that his derivative work has enough originality to entitle him to a copyright, and also
that the copyright is limited to the features that the derivative work adds to the original. But he insists
that with these limitations his copyright is valid.
5
We doubt that he could show the requisite incremental originality, Lee v. A.R.T. Co., 125 F.3d 580 (7th
Cir. 1997); Gracen v. Bradford Exchange, 698 F.2d 300, 304-05 (7th Cir. 1983), slight as it need be.
Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345, 362-63 (1991); CDN Inc. v.
Kapes, 197 F.3d 1256, 1259-61 (9th Cir. 1999); Acuff-Rose Music, Inc. v. Jostens, Inc., 155 F.3d 140,
143-44 (2d Cir. 1998); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright sec. 3.03, p. 3-10
(1999); see generally 1 Goldstein, supra, sec. 2.2.1, pp. 62-65. In Lee v. A.R.T. Co., supra, 125 F.3d at
582, we noted a conflict in the authorities over whether any originality is required for a derivative work.
We had explained in Gracen v. Bradford Exchange, supra, 698 F.2d at 304, and we'll note later in this
opinion as well, that such a requirement is essential in order to head off situations in which it is
impossible to adjudicate a dispute between owners of two derivative works because the works are
identical both to the original and to each other. The Ninth Circuit, the only court cited in Lee as
disagreeing with us, had, in fact, swung around to our view shortly before our decision came down.
Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., 122 F.3d 1211, 1220 (9th Cir.
1997).
6
Although Pickett's guitar isn't identical to the Prince symbol, the difference in appearance may well be
due to nothing more than the functional difference between a two-dimensional symbol and a guitar in
the shape of that symbol. In that event even Prince could not have copyrighted the guitar version of the
symbol. 17 U.S.C. sec. 101; American Dental Ass'n v. Delta Dental Plans Ass'n, 126 F.3d 977, 980 (7th
Cir. 1997); Entertainment Research Group, Inc. v. Genesis Creative Group, Inc., supra, 122 F.3d at 1221-
24; cf. Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366, 1374-75 (10th Cir. 1997); Williams v. Crichton, 84 F.3d
581, 587-88 (2d Cir. 1996). A guitar won't work without strings, frets, etc. arranged in a pattern dictated
by musical considerations, and to the extent that the pattern is what it is because otherwise the guitar
won't sound right, it is not copyrightable as a work of visual art. Maybe, though, the juxtaposition of the
symbol and the guitar is enough to confer on the ensemble sufficient originality as a work of visual art
to entitle the designer to copyright it. See North Coast Industries v. Jason Maxwell, Inc., 972 F.2d
1031 (9th Cir. 1992); Rogers v. Koons, 960 F.2d 301, 307 (2d Cir. 1992). Many works of art rely for
their effect on the juxtaposition of familiar elements ordinarily held separate (like a mustache painted
 on a photograph of the Mona Lisa); indeed, all works of art are ultimately combinations of familiar,
uncopyrightable items.
7
We need not pursue the issue of originality of derivative works. The Copyright Act grants the owner of a
copyright the exclusive right to prepare derivative works based upon the copyrighted work. 17 U.S.C.
sec. 106(2); Lee v. A.R.T. Co., supra, 125 F.3d at 581; Gracen v. Bradford Exchange, supra, 698 F.2d at
302; Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 618 n. 12 (7th Cir.
1982); Micro Star v. Formgen Inc., 154 F.3d 1107, 1110 (9th Cir. 1998). So Pickett could not make a
derivative work based on the Prince symbol without Prince's authorization even if Pickett's guitar had a
smidgeon of originality. This is a sensible result. A derivative work is, by definition, bound to be very
similar to the original. Concentrating the right to make derivative works in the owner of the original
work prevents what might otherwise be an endless series of infringement suits posing insoluble
difficulties of proof. Consider two translations into English of a book originally published in French. The
two translations are bound to be very similar and it will be difficult to establish whether they are very
similar because one is a copy of the other or because both are copies of the same foreign-language
original. Whether Prince's guitar is a copy of his copyrighted symbol or a copy of Pickett's guitar is
likewise not a question that the methods of litigation can readily answer with confidence. If anyone can
make derivative works based on the Prince symbol, we could have hundreds of Picketts, each charging
infringement by the others.
Advertisement

8
Pickett relies for his implausible theory primarily on section 103(a) of the Copyright Act, which provides
that while copyright can be obtained in derivative works, "protection for a work employing preexisting
material in which copyright subsists does not extend to any part of the work in which such material has
been used unlawfully." Pickett reads this as authorizing a person other than the owner of the original
work to make a derivative work, merely forbidding him to infringe the original. It is very difficult to see
how a derivative work not made by the owner of the original work could fail to infringe it, given the
definition of derivative works. (There is no infringement by the owner of the copyright of the original
work, since section 106(2) entitles him to make derivative works based on his copyrighted work.
Cortner v. Israel, 732 F.2d 267, 271 (2d Cir. 1984).) Picket doesn't deny this; having warded off (he
thinks) Prince's counterclaim for copyright infringement, he is unafraid to acknowledge that he is an
infringer and to content himself with arguing that his copyright extends only to the original elements of
the infringing work. But we do not read section 103(a) as qualifying the exclusive right of the owner of
the copyright of the original work to make derivative works based on that work, the right conferred by
section 106(2). Section 103(a) means only, at least so far as bears on this case, that the right to make a
derivative work does not authorize the maker to incorporate into it material that infringes someone
else's copyright. Cortner v. Israel, supra, 732 F.2d at 272; 1 Nimmer & Nimmer, supra, sec. 3.06, pp. 3-
34.23 to 3-34.27; cf. Harris Custom Builders, Inc. v. Hoffmeyer, 92 F.3d 517, 519 (7th Cir. 1996). So if
Pickett owned a copyright of, say, a picture of Prince, and Prince used that picture in his own guitar
without Pickett's consent, Pickett would have a claim of infringement. But the only copyright that Pickett
claims Prince infringed is a copyright that Pickett had no right to obtain, namely a copyright on a
derivative work based on Prince's copyrighted symbol.
9
Pickett relied in the district court on a dictum in Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d
27, 34 n. 6 (2d Cir. 1982), that a stranger can make a derivative work without the permission of the
owner of the copyright of the original work if the original work does not "pervade" the derivative work.
The suggestion, if taken seriously (which it has not been), would inject enormous uncertainty into the
law of copyright and undermine the exclusive right that section 106(2) gives the owner of the copyright
on the original work. It also rests on a confusion between the determination of whether a work is
derivative and the determination of who has the right to make the derivative work. Defined too broadly,
"derivative work" would confer enormous power on the owners of copyrights on preexisting works. The
Bernstein-Sondheim musical West Side Story, for example, is based loosely on Shakespeare's Romeo
and Juliet, which in turn is based loosely on Ovid's Pyramus and Thisbe, so that if "derivative work" were
defined broadly enough (and copyright were perpetual) West Side Story would infringe Pyramus and
Thisbe unless authorized by Ovid's heirs. We can thus imagine the notion of pervasiveness being used
to distinguish a work fairly described as derivative from works only loosely connected with some
ancestral work claimed to be their original. Cf. Micro Star v. Formgen Inc., supra, 154 F.3d at 1110. In
that sense Prince's symbol clearly "pervades" both guitars. If it did not, the guitars might not be
 derivative works, but they would not be derivative works that anyone was free to make without
obtaining Prince's permission.
10
It is apparent from what we have said so far not only that Pickett could not copyright his guitar, but that
his guitar infringes Prince's copyright. (Pickett's further argument, that Prince's copyright has
evaporated if, as Judge Shadur ruled, the counterclaim to enforce it is time- barred and so Prince's
symbol fell into the public domain and became fair game for makers of derivative works, is ridiculous.)
The remaining question, whether the counterclaim was properly dismissed on the basis of the statute of
limitations, is the subject of Prince's cross- appeal. Oddly, there is not the slightest doubt that the
amended counterclaim was filed before the statute of limitations expired, and this regardless of whether
it related back to the original, Fed. R. Civ. P. 15(c)(2), as probably it did not, since it was based on a
different copyright. Cf. 6A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and
Procedure sec. 1497, pp. 70-74 (1990). Although the amended counterclaim was filed on the last
possible day before expiration, namely the Monday after the Saturday that was the third anniversary of
the filing of Pickett's suit, see Fed. R. Civ. P. 6(a), the adage that a miss is as good as a mile applies in
reverse here: a suit is timely whether filed the day after the claim accrues or the very last day before
the suit would be time- barred.
11
So why was the counterclaim dismissed as untimely? The three-year period of limitations began running
on July 5, 1994, and the judge ruled that the counterclaim was untimely because it had not been filed
until July 7, 1997. Apparently no one, including the judge, noticed that July 5, 1997, was a Saturday.
Prince's lawyer finally woke up, and a couple of weeks after Judge Shadur had ruled filed a motion for
reconsideration which the judge denied on the ground that a motion for reconsideration is not an
appropriate vehicle for injecting a new legal theory into a case.

12
We think that in so ruling the judge abused his discretion. Unlike the case in which a judgment is sought
to be vacated, to which the principle enunciated by the judge does apply, e.g., Caisse Nationale de
Credit Agricole v. CBI Industries, Inc., 90 F.3d 1264, 1269-70 (7th Cir. 1996); Keene Corp. v.
International Fidelity Ins. Co., 736 F.2d 388, 393 (7th Cir. 1984), although its application to a
computational error having nothing to do with legal "theory" may be doubted, see Russell v. Delco
Remy Division, 51 F.3d 746, 749 (7th Cir. 1995), a motion to reconsider a ruling is constrained only by
the doctrine of the law of the case. And that doctrine is highly flexible, especially when a judge is being
asked to reconsider his own ruling. Avitia v. Metropolitan Club of Chicago, Inc., 49 F.3d 1219, 1227 (7th
Cir. 1995); Prisco v. A & D Carting Corp., 168 F.3d 593, 607 (2d Cir. 1999). Judge Shadur's ruling that
the counterclaim was untimely was interlocutory, and thus not a final judgment. In fact, it was not a
judgment at all. It was issued in December of 1997, and the final decision by the district court didn't
come until June 18 of last year. The ruling was also the plainest of plain errors, requiring only a glance
at the calendar to discover. The judge was led into the plain error by the party seeking to correct it, but
that is often the case. Had Prince's lawyer discovered the error a few weeks earlier and brought it to
Judge Shadur's attention before the judge ruled, undoubtedly the judge would have held that the
counterclaim was timely.
13
Although we can understand Judge Shadur's annoyance at being led into plain error, a judge's refusal to
correct a plain error that he had committed weeks before is not justified by the doctrine of the law of
the case, or anything else we can think of. Creek v. Village of Westhaven, 144 F.3d 441, 446 (7th Cir.
1998); Evans v. City of Chicago, 873 F.2d 1007, 1013-14 (7th Cir. 1989); United States v. Zanghi, 189
F.3d 71, 79-80 (1st Cir. 1999). Were we to uphold the denial of reconsideration and dismissal of the
counterclaim, we would be penalizing Prince's lawyer for having asked Judge Shadur to correct his own
mistake, rather than reserving the issue for an appeal, and we would thus be discouraging efforts by
litigants to purge errors before the case comes to us (perhaps it won't come to us if the errors are
purged). For if Prince had for the first time on appeal argued that Judge Shadur had erred in dismissing
the counterclaim as untimely, and if Pickett had responded that Prince had waived the issue by failing to
raise it in the district court, Prince would have appealed to the doctrine of plain error to absolve him
from the consequences of the waiver. And limited though that doctrine is in civil cases, see, e.g., Deppe
v. Tripp, 863 F.2d 1356, 1360-61 (7th Cir. 1988); Smith v. Kmart Corp., 177 F.3d 19, 28 (1st Cir. 1999),
we would have invoked it and reversed the dismissal of the counterclaim. The result should not be
different merely because, though apprised of the error, Judge Shadur refused to correct it.
14
It is conceivable though not argued that Prince's failure to discover that July 5, 1997, was a Saturday (or
to realize the significance of the fact) was harmful to Pickett; but such an argument would get nowhere,
 for it was as irresponsible for Pickett's lawyer to argue the untimeliness of a counterclaim that he should
have known was timely as it was for Prince's lawyer to fail to refute the argument. As no effort was
made to show that Pickett was harmed by Prince's mistake (and it was, to repeat, Pickett's mistake as
well), let alone so gravely harmed as to warrant the dismissal of the counterclaim rather than just an
order that Prince reimburse Pickett for any expense occasioned by the mistake, we cannot think of any
reason at all why Judge Shadur should have refused to rescind his erroneous dismissal of the
counterclaim.

15
The judgment is affirmed insofar as it dismisses Pickett's suit but vacated insofar as it dismisses the
counterclaim, and the case is remanded for further proceedings consistent with this opinion.

16
Affirmed in Part, Vacated in Part, and Remanded.
 FEIST PUBLICATIONS, INC. v. RURAL
TELEPHONE SERVICE CO., 499 U.S. 340 (1991)
O'CONNOR, J., delivered the opinion of the Court, in which
REHNQUIST, C. J., and WHITE, MARSHALL, STEVENS,
SCALIA, KENNEDY, and SOUTER, JJ., joined. BLACKMUN,
J., concurred in the judgment.

[p*342] JUSTICE O'CONNOR delivered the opinion of the Court.

[1] This case requires us to clarify the extent of copyright protection available to telephone
directory white pages.

[2] Rural Telephone Service Company is a certified public utility that provides telephone service to
several communities in northwest Kansas. It is subject to a state regulation that requires all
telephone companies operating in Kansas to issue annually an updated telephone directory.
Accordingly, as a condition of its monopoly franchise, Rural publishes a typical telephone
directory, consisting of white pages and yellow pages. The white pages list in alphabetical order the
names of Rural's subscribers, together with their towns and telephone numbers. The yellow pages
list Rural's business subscribers alphabetically by category and feature classified advertisements of
various sizes. Rural distributes its directory free of charge to its subscribers, but earns revenue by
selling yellow pages advertisements.

[3] Feist Publications, Inc., is a publishing company that specializes in area-wide telephone
directories. Unlike a typical [p*343] directory, which covers only a particular calling area, Feist's
area-wide directories cover a much larger geographical range, reducing the need to call directory
assistance or consult multiple directories. The Feist directory that is the subject of this litigation
covers 11 different telephone service areas in 15 counties and contains 46,878 white pages listings
-- compared to Rural's approximately 7,700 listings. Like Rural's directory, Feist's is distributed
free of charge and includes both white pages and yellow pages. Feist and Rural compete vigorously
for yellow pages advertising.

[4] As the sole provider of telephone service in its service area, Rural obtains subscriber
information quite easily. Persons desiring telephone service must apply to Rural and provide their
names and addresses; Rural then assigns them a telephone number. Feist is not a telephone
company, let alone one with monopoly status, and therefore lacks independent access to any
subscriber information. To obtain white pages listings for its area-wide directory, Feist approached
each of the 11 telephone companies operating in northwest Kansas and offered to pay for the right
to use its white pages listings.
[5] Of the 11 telephone companies, only Rural refused to license its listings to Feist. Rural's refusal
created a problem for Feist, as omitting these listings would have left a gaping hole in its area-wide
directory, rendering it less attractive to potential yellow pages advertisers. In a decision subsequent
to that which we review here, the District Court determined that this was precisely the reason Rural
refused to license its listings. The refusal was motivated by an unlawful purpose "to extend its
monopoly in telephone service to a monopoly in yellow pages advertising." Rural Telephone
Service Co. v. Feist Publications, Inc., 737 F. Supp. 610, 622 (Kan. 1990).

[6] Unable to license Rural's white pages listings, Feist used them without Rural's consent. Feist
began by removing several thousand listings that fell outside the geographic range of its area-wide
directory, then hired personnel to investigate the 4,935 that remained. These employees verified
[p*344] the data reported by Rural and sought to obtain additional information. As a result, a
typical Feist listing includes the individual's street address; most of Rural's listings do not.
Notwithstanding these additions, however, 1,309 of the 46,878 listings in Feist's 1983 directory
were identical to listings in Rural's 1982-1983 white pages. App. 54 (para. 15-16), 57. Four of
these were fictitious listings that Rural had inserted into its directory to detect copying.

[7] Rural sued for copyright infringement in the District Court for the District of Kansas taking the
position that Feist, in compiling its own directory, could not use the information contained in
Rural's white pages. Rural asserted that Feist's employees were obliged to travel door-to-door or
conduct a telephone survey to discover the same information for themselves. Feist responded that
such efforts were economically impractical and, in any event, unnecessary because the information
copied was beyond the scope of copyright protection. The District Court granted summary
judgment to Rural, explaining that "courts have consistently held that telephone directories are
copyrightable" and citing a string of lower court decisions. 663 F. Supp. 214, 218 (1987). In an
unpublished opinion, the Court of Appeals for the Tenth Circuit affirmed "for substantially the
reasons given by the district court." App. to Pet. for Cert. 4a, judgt. order reported at 916 F. 2d 718
(1990). We granted certiorari, 498 U.S. 808 (1990), to determine whether the copyright in Rural's
directory protects the names, towns, and telephone numbers copied by Feist.

II

[8] This case concerns the interaction of two well-established propositions. The first is that facts are
not copyrightable; the other, that compilations of facts generally are. Each of these propositions
possesses an impeccable pedigree. That there can be no valid copyright in facts is universally
understood. The most fundamental axiom of copyright law is that [p*345] "no author may
copyright his ideas or the facts he narrates." Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539, 556 (1985). Rural wisely concedes this point, noting in its brief that "facts and
discoveries, of course, are not themselves subject to copyright protection." Brief for Respondent 24.
At the same time, however, it is beyond dispute that compilations of facts are within the subject
matter of copyright. Compilations were expressly mentioned in the Copyright Act of 1909, and
again in the Copyright Act of 1976.
[9] There is an undeniable tension between these two propositions. Many compilations consist of
nothing but raw data -- i. e., wholly factual information not accompanied by any original written
expression. On what basis may one claim a copyright in such a work? Common sense tells us that
100 uncopyrightable facts do not magically change their status when gathered together in one
place. Yet copyright law seems to contemplate that compilations that consist exclusively of facts are
potentially within its scope.

[10] The key to resolving the tension lies in understanding why facts are not copyrightable.
The sine qua non of copyright is originality. To qualify for copyright protection, a work must be
original to the author. See Harper & Row, supra, at 547-549. Original, as the term is used in
copyright, means 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. 1 M. Nimmer &
D. Nimmer, Copyright 2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the requisite
level of creativity is extremely low; even a slight amount will suffice. The vast majority of works
make the grade quite easily, as they possess some creative spark, "no matter how crude, humble or
obvious" it might be. Id., 1.08[C][1]. Originality does not signify novelty; a work may be
original even though it closely resembles other works so long as the similarity is fortuitous, not the
result of copying. To illustrate, [p*346] assume that two poets, each ignorant of the other, compose
identical poems. Neither work is novel, yet both are original and, hence, copyrightable.
See Sheldon v. Metro-Goldwyn Pictures Corp., 81 F. 2d 49, 54 (CA2 1936).

[11] Originality is a constitutional requirement. The source of Congress' power to enact copyright
laws is Article I, 8, cl. 8, of the Constitution, which authorizes Congress to "secure for limited
Times to Authors . . . the exclusive Right to their respective Writings." In two decisions from the
late 19th Century -- The Trade-Mark Cases, 100 U.S. 82 (1879); and Burrow-Giles Lithographic
Co. v. Sarony, 111 U.S. 53 (1884) -- this Court defined the crucial terms "authors" and "writings."
In so doing, the Court made it unmistakably clear that these terms presuppose a degree of
originality.

[12] In The Trade-Mark Cases, the Court addressed the constitutional scope of "writings." For a
particular work to be classified "under the head of writings of authors," the Court determined,
"originality is required." 100 U.S., at 94. The Court explained that originality requires independent
creation plus a modicum of creativity: "While the word writingsmay be liberally construed, as it
has been, to include original designs for engraving, prints, &c., it is only such as are original, and
are founded in the creative powers of the mind. The writings which are to be protected are the fruits
of intellectual labor, embodied in the form of books, prints, engravings, and the like." Ibid.
(emphasis in original).

[13] In Burrow-Giles, the Court distilled the same requirement from the Constitution's use of the
word "authors." The Court defined "author," in a constitutional sense, to mean "he to whom
anything owes its origin; originator; maker." 111 U.S., at 58 (internal quotations omitted). As
in The Trade-Mark Cases, the Court emphasized the creative component of originality. It described
copyright as being limited to "original intellectual conceptions of the author," ibid., and stressed the
importance of requiring an author who accuses another of infringement to prove "the existence
[p*347] of those facts of originality, of intellectual production, of thought, and conception." Id., at
59-60.
[14] The originality requirement articulated in The Trade-Mark Cases and Burrow-Giles remains
the touchstone of copyright protection today. See Goldstein v. California, 412 U.S. 546, 561-562
(1973). It is the very "premise of copyright law." Miller v. Universal City Studios, Inc., 650 F. 2d
1365, 1368 (CA5 1981). Leading scholars agree on this point. As one pair of commentators
succinctly puts it: "The originality requirement is constitutionally mandated for all
works." Patterson & Joyce, Monopolizing the Law: The Scope of Copyright Protection for Law
Reports and Statutory Compilations, 36 UCLA L. Rev. 719, 763, n. 155 (1989) (emphasis in
original) (hereinafter Patterson & Joyce). Accord id., at 759-760, and n. 140; Nimmer 1.06[A]
("originality is a statutory as well as a constitutional requirement"); id., 1.08[C][1] ("a modicum
of intellectual labor . . . clearly constitutes an essential constitutional element").

[15] It is this bedrock principle of copyright that mandates the law's seemingly disparate treatment
of facts and factual compilations. "No one may claim originality as to facts." Id., 2.11[A], p. 2-
157. This is because facts do not owe their origin to an act of authorship. The distinction is one
between creation and discovery: the first person to find and report a particular fact has not created
the fact; he or she has merely discovered its existence. To borrow from Burrow-Giles, one who
discovers a fact is not its "maker" or "originator." 111 U.S., at 58. "The discoverer merely finds and
records." Nimmer 2.03[E]. Census-takers, for example, do not "create" the population figures
that emerge from their efforts; in a sense, they copy these figures from the world around them.
Denicola, Copyright in Collections of Facts: A Theory for the Protection of Nonfiction Literary
Works, 81 Colum. L. Rev. 516, 525 (1981) (hereinafter Denicola). Census data therefore do not
trigger copyright because these data are not "original" in the constitutional sense. Nimmer [p*348]
2.03[E]. The same is true of all facts -- scientific, historical, biographical, and news of the day.
"They may not be copyrighted and are part of the public domain available to every
person." Miller, supra, at 1369.

[16] Factual compilations, on the other hand, may possess the requisite originality. The compilation
author typically chooses which facts to include, in what order to place them, and how to arrange the
collected data so that they may be used effectively by readers. These choices as to selection and
arrangement, so long as they are made independently by the compiler and entail a minimal degree
of creativity, are sufficiently original that Congress may protect such compilations through the
copyright laws. Nimmer 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a directory that
contains absolutely no protectible written expression, only facts, meets the constitutional minimum
for copyright protection if it features an original selection or arrangement. See Harper & Row, 471
U.S., at 547. Accord Nimmer 3.03.

[17] This protection is subject to an important limitation. The mere fact that a work is copyrighted
does not mean that every element of the work may be protected. Originality remains the sine qua
non of copyright; accordingly, copyright protection may extend only to those components of a work
that are original to the author. Patterson & Joyce 800-802; Ginsburg, Creation and Commercial
Value: Copyright Protection of Works of Information, 90 Colum. L. Rev. 1865, 1868, and n. 12
(1990) (hereinafter Ginsburg). Thus, if the compilation author clothes facts with an original
collocation of words, he or she may be able to claim a copyright in this written expression. Others
may copy the underlying facts from the publication, but not the precise words used to present them.
In Harper & Row, for example, we explained that President Ford could not prevent others from
copying bare historical facts from his autobiography, see 471 U.S., at 556-557, but that he could
prevent others from copying his "subjective descriptions and portraits of public figures."
[p*349] Id., at 563. Where the compilation author adds no written expression but rather lets the
facts speak for themselves, the expressive element is more elusive. The only conceivable
expression is the manner in which the compiler has selected and arranged the facts. Thus, if the
selection and arrangement are original, these elements of the work are eligible for copyright
protection. See Patry, Copyright in Compilations of Facts (or Why the "White Pages" Are Not
Copyrightable), 12 Com. & Law 37, 64 (Dec. 1990) (hereinafter Patry). No matter how original the
format, however, the facts themselves do not become original through association. See Patterson &
Joyce 776.

[18] This inevitably means that the copyright in a factual compilation is thin. Notwithstanding a
valid copyright, a subsequent compiler remains free to use the facts contained in an another's
publication to aid in preparing a competing work, so long as the competing work does not feature
the same selection and arrangement. As one commentator explains it: "No matter how much
original authorship the work displays, the facts and ideas it exposes are free for the taking . . . . The
very same facts and ideas may be divorced from the context imposed by the author, and restated or
reshuffled by second comers, even if the author was the first to discover the facts or to propose the
ideas." Ginsburg 1868.

[19] It may seem unfair that much of the fruit of the compiler's labor may be used by others without
compensation. As Justice Brennan has correctly observed, however, this is not "some unforeseen
byproduct of a statutory scheme." Harper & Row, 471 U.S., at 589 (dissenting opinion). It is,
rather, "the essence of copyright," ibid., and a constitutional requirement. The primary objective of
copyright is not to reward the labor of authors, but "to promote the Progress of Science and useful
Arts." Art. I, 8, cl. 8. Accord Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
To this end, copyright assures authors the right to their original [p*350] expression, but encourages
others to build freely upon the ideas and information conveyed by a work. Harper & Row, supra, at
556-557. This principle, known as the idea-expression or fact-expression dichotomy, applies to all
works of authorship. As applied to a factual compilation, assuming the absence of original written
expression, only the compiler's selection and arrangement may be protected; the raw facts may be
copied at will. This result is neither unfair nor unfortunate. It is the means by which copyright
advances the progress of science and art.

[20] This Court has long recognized that the fact-expression dichotomy limits severely the scope of
protection in fact-based works. More than a century ago, the Court observed: "The very object of
publishing a book on science or the useful arts is to communicate to the world the useful
knowledge which it contains. But this object would be frustrated if the knowledge could not be
used without incurring the guilt of piracy of the book." Baker v. Selden, 101 U.S. 99, 103 (1880).
We reiterated this point in Harper & Row:

"No author may copyright facts or ideas. The copyright is limited to those aspects of the work --
termed 'expression' -- that display the stamp of the author's originality.

Copyright does not prevent subsequent users from copying from a prior author's work those
constituent elements that are not original -- for example . . . facts, or materials in the public domain
-- as long as such use does not unfairly appropriate the author's original contributions. 471 U.S., at
547-548 (citation omitted).

[21] This, then, resolves the doctrinal tension: Copyright treats facts and factual compilations in a
wholly consistent manner. Facts, whether alone or as part of a compilation, are not original and
therefore may not be copyrighted. A factual compilation is eligible for copyright if it features an
original selection or arrangement of facts, but the copyright is limited to [p*351] the particular
selection or arrangement. In no event may copyright extend to the facts themselves.

[22] As we have explained, originality is a constitutionally mandated prerequisite for copyright

protection. The Court's decisions announcing this rule predate the Copyright Act of 1909, but
ambiguous language in the 1909 Act caused some lower courts temporarily to lose sight of this
requirement.

[23] The 1909 Act embodied the originality requirement, but not as clearly as it might have. See
Nimmer 2.01. The subject matter of copyright was set out in 3 and 4 of the Act. Section 4
stated that copyright was available to all the writings of an author. 35 Stat. 1076. By using the
words writings and author -- the same words used in Article I, 8 of the Constitution and
defined by the Court in The Trade-Mark Cases and Burrow-Giles -- the statute necessarily
incorporated the originality requirement articulated in the Court's decisions. It did so implicitly,
however, thereby leaving room for error.

[24] Section 3 was similarly ambiguous. It stated that the copyright in a work protected only the
copyrightable component parts of the work. It thus stated an important copyright principle, but
failed to identify the specific characteristic -- originality -- that determined which component parts
of a work were copyrightable and which were not.

[25] Most courts construed the 1909 Act correctly, notwithstanding the less-than-perfect statutory
language. They understood from this Court's decisions that there could be no copyright without
originality. See Patterson & Joyce 760-761. As explained in the Nimmer treatise: The 1909 Act
neither defined originality, nor even expressly required that a work be 'original' in order to
command protection. However, the courts uniformly inferred the requirement from the fact that
copyright protection may only be claimed by 'authors' . . . . It was reasoned that since an author is
'the . . . [p*352] creator, originator' it follows that a work is not the product of an author unless the
work is original. Nimmer 2.01 (footnotes omitted) (citing cases).

[26] But some courts misunderstood the statute. See, e. g., Leon v. Pacific Telephone & Telegraph
Co., 91 F. 2d 484 (CA9 1937); Jeweler's Circular Publishing Co. v. Keystone Publishing Co., 281
F. 83 (CA2 1922). These courts ignored 3 and 4, focusing their attention instead on 5 of
the Act. Section 5, however, was purely technical in nature: it provided that a person seeking to
register a work should indicate on the application the type of work, and it listed 14 categories under
which the work might fall. One of these categories was books, including composite and
cyclopedic works, directories, gazetteers, and other compilations. 5(a). Section 5 did not
purport to say that all compilations were automatically copyrightable. Indeed, it expressly
disclaimed any such function, pointing out that the subject-matter of copyright is defined in
section four. Nevertheless, the fact that factual compilations were mentioned specifically in 5
led some courts to infer erroneously that directories and the like were copyrightable per se,
without any further or precise showing of original -- personal -- authorship. Ginsburg 1895.

[27] Making matters worse, these courts developed a new theory to justify the protection of factual
compilations. Known alternatively as sweat of the brow or industrious collection, the
underlying notion was that copyright was a reward for the hard work that went into compiling facts.
The classic formulation of the doctrine appeared in Jeweler's Circular Publishing Co., 281 F., at
88:

The right to copyright a book upon which one has expended labor in its preparation does not
depend upon whether the materials which he has collected consist or not of matters which are
publici juris, or whether such materials show literary skill or originality, either in thought or in
language, or anything more than industrious [p*353] collection. The man who goes through the
streets of a town and puts down the names of each of the inhabitants, with their occupations and
their street number, acquires material of which he is the author (emphasis added).

[28] The sweat of the brow doctrine had numerous flaws, the most glaring being that it extended
copyright protection in a compilation beyond selection and arrangement -- the compiler's original
contributions -- to the facts themselves. Under the doctrine, the only defense to infringement was
independent creation. A subsequent compiler was not entitled to take one word of information
previously published, but rather had to independently work out the matter for himself, so as to
arrive at the same result from the same common sources of information. Id., at 88-89 (internal
quotations omitted). Sweat of the brow courts thereby eschewed the most fundamental axiom of
copyright law -- that no one may copyright facts or ideas. See Miller v. Universal City Studios, Inc.,
650 F. 2d, at 1372 (criticizing sweat of the brow courts because ensuring that later writers obtain
the facts independently . . . is precisely the scope of protection given . . . copyrighted matter, and
the law is clear that facts are not entitled to such protection).

[29] Decisions of this Court applying the 1909 Act make clear that the statute did not permit the
sweat of the brow approach. The best example is International News Servicev. Associated Press,
248 U.S. 215 (1918). In that decision, the Court stated unambiguously that the 1909 Act conferred
copyright protection only on those elements of a work that were original to the author. Associated
Press had conceded taking news reported by International News Service and publishing it in its
own newspapers. Recognizing that 5 of the Act specifically mentioned periodicals, including
newspapers, 5(b), the Court acknowledged that news articles were copyrightable. Id., at 234. It
flatly rejected, however, the notion that the copyright in an article extended to [p*354] the factual
information it contained: The news element -- the information respecting current events contained
in the literary production -- is not the creation of the writer, but is a report of matters that ordinarily
are publici juris; it is the history of the day. Ibid. [n1]

[30] Without a doubt, the sweat of the brow doctrine flouted basic copyright principles.
Throughout history, copyright law has recognized a greater need to disseminate factual works than
works of fiction or fantasy. Harper & Row, 471 U.S., at 563. Accord Gorman, Fact or Fancy: The
Implications for Copyright, 29 J. Copyright Soc. 560, 563 (1982). But sweat of the brow courts
took a contrary view; they handed out proprietary interests in facts and declared that authors are
absolutely precluded from saving time and effort by relying upon the facts contained in prior
works. In truth, it is just such wasted effort that the proscription against the copyright of ideas and
facts . . . [is] designed to prevent. Rosemont Enterprises, Inc. v. Random House, Inc., 366 F. 2d
303, 310 (CA2 1966), cert. denied, 385 U.S. 1009 (1967). Protection for the fruits of such research
. . . may in certain circumstances be available under a theory of unfair competition. But to accord
copyright protection on this basis alone distorts basic copyright principles in that it creates a
monopoly in public domain materials without the necessary justification of protecting and
encouraging the creation of 'writings' by 'authors.' Nimmer 3.04, p. 3-23 (footnote omitted).

[31] Sweat of the brow decisions did not escape the attention of the Copyright Office. When
Congress decided to overhaul the copyright statute and asked the Copyright Office to study existing
problems, see Mills Music, Inc. v. Snyder, 469 U.S. 153, 159 (1985), the Copyright Office promptly
recommended that Congress clear up the confusion in the lower courts as to the basic standards of
copyrightability. The Register of Copyrights explained in his first report to Congress that
originality was a basic requisite of copyright under the 1909 Act, but that the absence of any
reference to [originality] in the statute seems to have led to misconceptions as to what is
copyrightable matter. Report of the Register of Copyrights on the General Revision of the U.S.
Copyright Law, 87th Cong., 1st Sess., p. 9 (H. Judiciary Comm. Print 1961). The Register
suggested making the originality requirement explicit. Ibid.

[32] Congress took the Register's advice. In enacting the Copyright Act of 1976, Congress dropped
the reference to all the writings of an author and replaced it with the phrase original works of
authorship. 17 U.S.C. 102(a). In making explicit the originality requirement, Congress
announced that it was merely clarifying existing law: The two fundamental criteria of copyright
protection [are] originality and fixation in tangible form . . . . The phrase 'original works of
authorship,' which is purposely left undefined, is intended to incorporate without change the
standard of originality established by the courts under the present [1909] copyright statute. H. R.
Rep. No. 94-1476, p. 51 (1976) (emphasis added) (hereinafter H. R. Rep.); S. Rep. No. 94-473, p.
50 (1975) (emphasis added) (hereinafter S. Rep.). This sentiment was echoed by the Copyright
Office: Our intention here is to maintain the established standards of originality . . . .
Supplementary Report of the Register of Copyrights on the General Revision of U.S. Copyright
Law, 89th Cong., 1st Sess., Part 6, p. 3 (H. Judiciary Comm. Print 1965) (emphasis added).

[33] To ensure that the mistakes of the sweat of the brow courts would not be repeated, Congress
took additional measures. For example, 3 of the 1909 Act had stated that copyright protected
only the copyrightable component parts of a work, but had not identified originality as the basis
for distinguishing those component parts that were copyrightable from those that were not. The
1976 Act deleted this section and replaced it with 102(b), which identifies specifically those
elements of a work for which copyright is not available: In no case does copyright protection for
an original work of authorship extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is described, explained,
illustrated, or embodied in such work. 102(b) is universally understood to prohibit any
copyright in facts. Harper & Row, supra, at 547, 556. Accord Nimmer 2.03[E] (equating facts
with discoveries). As with 102(a), Congress emphasized that 102(b) did not change the
law, but merely clarified it: Section 102(b) in no way enlarges or contracts the scope of copyright
protection under the present law. Its purpose is to restate . . . that the basic dichotomy between
expression and idea remains unchanged. H. R. Rep., at 57; S. Rep., at 54.

[34] Congress took another step to minimize confusion by deleting the specific mention of
directories . . . and other compilations in 5 of the 1909 Act. As mentioned, this section had led
some courts to conclude that directories were copyrightable per se and that every element of a
directory was protected. In its place, Congress enacted two new provisions. First, to make clear that
compilations were not copyrightable per se, Congress provided a definition of the term
compilation. Second, to make clear that the copyright in a compilation did not extend to the facts
themselves, Congress enacted 17 U.S.C. 103.

[35] The definition of compilation is found in 101 of the 1976 Act. It defines a compilation
in the copyright sense as a work formed by the collection and assembly of preexisting materials or
of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole
constitutes an original work of authorship (emphasis added).

[36] The purpose of the statutory definition is to emphasize that collections of facts are not
copyrightable per se. It conveys this message through its tripartite structure, as emphasized above
by the italics. The statute identifies three distinct elements and requires each to be met for a work to
qualify as a copyrightable compilation: (1) the collection and assembly of pre-existing material,
facts, or data; (2) the selection, coordination, or arrangement of those materials; and (3) the
creation, by virtue of the particular selection, coordination, or arrangement, of an original work
of authorship. This tripartite conjunctive structure is self-evident, and should be assumed to
'accurately express the legislative purpose.' Patry 51, quoting Mills Music, 469 U.S., at 164.

[37] At first glance, the first requirement does not seem to tell us much. It merely describes what
one normally thinks of as a compilation -- a collection of pre-existing material, facts, or data. What
makes it significant is that it is not the sole requirement. It is not enough for copyright purposes that
an author collects and assembles facts. To satisfy the statutory definition, the work must get over
two additional hurdles. In this way, the plain language indicates that not every collection of facts
receives copyright protection. Otherwise, there would be a period after data.

[38] The third requirement is also illuminating. It emphasizes that a compilation, like any other
work, is copyrightable only if it satisfies the originality requirement (an originalwork of
authorship). Although 102 states plainly that the originality requirement applies to all works,
the point was emphasized with regard to compilations to ensure that courts would not repeat the
mistake of the sweat of the brow courts by concluding that fact-based works are treated
differently and measured by some other standard. As Congress explained it, the goal was to make
plain that the criteria of copyrightable subject matter stated in section 102 apply with full force to
works . . . containing preexisting material. H. R. Rep., at 57; S. Rep., at 55.

[39] The key to the statutory definition is the second requirement. It instructs courts that, in
determining whether a fact-based work is an original work of authorship, they should focus on the
manner in which the collected facts have been selected, coordinated, and arranged. This is a
straightforward application of the originality requirement. Facts are never original, so the
compilation author can claim originality, if at all, only in the way the facts are presented. To that
end, the statute dictates that the principal focus should be on whether the selection, coordination,
and arrangement are sufficiently original to merit protection.

[40] Not every selection, coordination, or arrangement will pass muster. This is plain from the
statute. It states that, to merit protection, the facts must be selected, coordinated, or arranged in
such a way as to render the work as a whole original. This implies that some ways will trigger
copyright, but that others will not. See Patry 57, and n. 76. Otherwise, the phrase in such a way is
meaningless and Congress should have defined compilation simply as a work formed by the
collection and assembly of preexisting materials or data that are selected, coordinated, or arranged.
That Congress did not do so is dispositive. In accordance with the established principle that a
court should give effect, if possible, to every clause and word of a statute, Moskal v. United States,
498 U.S. 103, 109-110 (1990) (internal quotations omitted), we conclude that the statute envisions
that there will be some fact-based works in which the selection, coordination, and arrangement are
not sufficiently original to trigger copyright protection.

[41] As discussed earlier, however, the originality requirement is not particularly stringent. A
compiler may settle upon a selection or arrangement that others have used; novelty is not required.
Originality requires only that the author make the selection or arrangement independently (i. e.,
without copying that selection or arrangement from another work), and that it display some
minimal level of creativity. Presumably, [p*359] the vast majority of compilations will pass this
test, but not all will. There remains a narrow category of works in which the creative spark is
utterly lacking or so trivial as to be virtually nonexistent. See generally Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239, 251 (1903) (referring to the narrowest and most obvious
limits). Such works are incapable of sustaining a valid copyright. Nimmer 2.01[B].

[42] Even if a work qualifies as a copyrightable compilation, it receives only limited protection.
This is the point of 103 of the Act. Section 103 explains that the subject matter of copyright . . .
includes compilations, 103(a), but that copyright protects only the author's original
contributions -- not the facts or information conveyed:

The copyright in a compilation . . . extends only to the material contributed by the author of such
work, as distinguished from the preexisting material employed in the work, and does not imply any
exclusive right in the preexisting material. 103(b).

[43] As 103 makes clear, copyright is not a tool by which a compilation author may keep others
from using the facts or data he or she has collected. The most important point here is one that is
commonly misunderstood today: copyright . . . has no effect one way or the other on the copyright
or public domain status of the preexisting material. H. R. Rep., at 57; S. Rep., at 55. The 1909 Act
did not require, as sweat of the brow courts mistakenly assumed, that each subsequent compiler
must start from scratch and is precluded from relying on research undertaken by another. See, e.
g., Jeweler's Circular Publishing Co., 281 F., at 88-89. Rather, the facts contained in existing works
may be freely copied because copyright protects only the elements that owe their origin to the
compiler -- the selection, coordination, and arrangement of facts.
[44] In summary, the 1976 revisions to the Copyright Act leave no doubt that originality, not sweat
of the brow, is the [p*360] touchstone of copyright protection in directories and other fact-based
works. Nor is there any doubt that the same was true under the 1909 Act. The 1976 revisions were a
direct response to the Copyright Office's concern that many lower courts had misconstrued this
basic principle, and Congress emphasized repeatedly that the purpose of the revisions was to
clarify, not change, existing law. The revisions explain with painstaking clarity that copyright
requires originality, 102(a); that facts are never original, 102(b); that the copyright in a
compilation does not extend to the facts it contains, 103(b); and that a compilation is
copyrightable only to the extent that it features an original selection, coordination, or arrangement,
101.

[45] The 1976 revisions have proven largely successful in steering courts in the right direction. A
good example is Miller v. Universal City Studios, Inc., 650 F. 2d, at 1369-1370: A copyright in a
directory . . . is properly viewed as resting on the originality of the selection and arrangement of the
factual material, rather than on the industriousness of the efforts to develop the information.
Copyright protection does not extend to the facts themselves, and the mere use of information
contained in a directory without a substantial copying of the format does not constitute
infringement (citation omitted). Additionally, the Second Circuit, which almost 70 years ago
issued the classic formulation of the sweat of the brow doctrine in Jeweler's Circular Publishing
Co., has now fully repudiated the reasoning of that decision. See, e. g., Financial Information,
Inc. v. Moody's Investors Service, Inc., 808 F. 2d 204, 207 (CA2 1986), cert. denied, 484 U.S. 820
(1987); Financial Information, Inc. v. Moody's Investors Service, Inc., 751 F. 2d 501, 510 (CA2
1984) (Newman, J., concurring); Hoehling v. Universal City Studios, Inc., 618 F. 2d 972, 979 (CA2
1980). Even those scholars who believe that industrious collection should be rewarded seem to
recognize that this is beyond the scope of existing copyright law. See Denicola 516 (the very
vocabulary of copyright [p*361] is ill suited to analyzing property rights in works of
nonfiction); id., at 520-521, 525; Ginsburg 1867, 1870.

III

[46] There is no doubt that Feist took from the white pages of Rural's directory a substantial
amount of factual information. At a minimum, Feist copied the names, towns, and telephone
numbers of 1,309 of Rural's subscribers. Not all copying, however, is copyright infringement. To
establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2)
copying of constituent elements of the work that are original. See Harper & Row, 471 U.S., at 548.
The first element is not at issue here; Feist appears to concede that Rural's directory, considered as a
whole, is subject to a valid copyright because it contains some foreword text, as well as original
material in its yellow pages advertisements. See Brief for Petitioner 18; Pet. for Cert. 9.

[47] The question is whether Rural has proved the second element. In other words, did Feist, by
taking 1,309 names, towns, and telephone numbers from Rural's white pages, copy anything that
was original to Rural? Certainly, the raw data does not satisfy the originality requirement. Rural
may have been the first to discover and report the names, towns, and telephone numbers of its
subscribers, but this data does not 'owe its origin' to Rural. Burrow-Giles, 111 U.S., at 58. Rather,
these bits of information are uncopyrightable facts; they existed before Rural reported them and
would have continued to exist if Rural had never published a telephone directory. The originality
requirement rules out protecting . . . names, addresses, and telephone numbers of which the
plaintiff by no stretch of the imagination could be called the author. Patterson & Joyce 776.

[48] Rural essentially concedes the point by referring to the names, towns, and telephone numbers
as preexisting material. Brief for Respondent 17. Section 103(b) states explicitly [p*362] that the
copyright in a compilation does not extend to the preexisting material employed in the work.

[49] The question that remains is whether Rural selected, coordinated, or arranged these
uncopyrightable facts in an original way. As mentioned, originality is not a stringent standard; it
does not require that facts be presented in an innovative or surprising way. It is equally true,
however, that the selection and arrangement of facts cannot be so mechanical or routine as to
require no creativity whatsoever. The standard of originality is low, but it does exist. See Patterson
& Joyce 760, n. 144 (While this requirement is sometimes characterized as modest, or a low
threshold, it is not without effect) (internal quotations omitted; citations omitted). As this Court
has explained, the Constitution mandates some minimal degree of creativity, see The Trade-Mark
Cases, 100 U.S., at 94; and an author who claims infringement must prove the existence of . . .
intellectual production, of thought, and conception. Burrow-Giles, supra, at 59-60.

[50] The selection, coordination, and arrangement of Rural's white pages do not satisfy the
minimum constitutional standards for copyright protection. As mentioned at the outset, Rural's
white pages are entirely typical. Persons desiring telephone service in Rural's service area fill out an
application and Rural issues them a telephone number. In preparing its white pages, Rural simply
takes the data provided by its subscribers and lists it alphabetically by surname. The end product is
a garden-variety white pages directory, devoid of even the slightest trace of creativity.

[51] Rural's selection of listings could not be more obvious: it publishes the most basic information
-- name, town, and telephone number -- about each person who applies to it for telephone service.
This is selection of a sort, but it lacks the modicum of creativity necessary to transform mere
selection into copyrightable expression. Rural expended sufficient effort [p*363] to make the white
pages directory useful, but insufficient creativity to make it original.

[52] We note in passing that the selection featured in Rural's white pages may also fail the
originality requirement for another reason. Feist points out that Rural did not truly select to
publish the names and telephone numbers of its subscribers; rather, it was required to do so by the
Kansas Corporation Commission as part of its monopoly franchise. See 737 F. Supp., at 612.
Accordingly, one could plausibly conclude that this selection was dictated by state law, not by
Rural.

[53] Nor can Rural claim originality in its coordination and arrangement of facts. The white pages
do nothing more than list Rural's subscribers in alphabetical order. This arrangement may,
technically speaking, owe its origin to Rural; no one disputes that Rural undertook the task of
alphabetizing the names itself. But there is nothing remotely creative about arranging names
alphabetically in a white pages directory. It is an age-old practice, firmly rooted in tradition and so
commonplace that it has come to be expected as a matter of course. See Brief for Information
Industry Association et al. as Amici Curiae 10 (alphabetical arrangement is universally observed in
directories published by local exchange telephone companies). It is not only unoriginal, it is
practically inevitable. This time-honored tradition does not possess the minimal creative spark
required by the Copyright Act and the Constitution.

[54] We conclude that the names, towns, and telephone numbers copied by Feist were not original
to Rural and therefore were not protected by the copyright in Rural's combined white and yellow
pages directory. As a constitutional matter, copyright protects only those constituent elements of a
work that possess more than a de minimis quantum of creativity. Rural's white pages, limited to
basic subscriber information and arranged alphabetically, fall short of the mark. As a statutory
matter, 17 U.S.C. 101 does not afford protection [p*364] from copying to a collection of facts
that are selected, coordinated, and arranged in a way that utterly lacks originality. Given that some
works must fail, we cannot imagine a more likely candidate. Indeed, were we to hold that Rural's
white pages pass muster, it is hard to believe that any collection of facts could fail.

[55] Because Rural's white pages lack the requisite originality, Feist's use of the listings cannot
constitute infringement. This decision should not be construed as demeaning Rural's efforts in
compiling its directory, but rather as making clear that copyright rewards originality, not effort. As
this Court noted more than a century ago, 'great praise may be due to the plaintiffs for their
industry and enterprise in publishing this paper, yet the law does not contemplate their being
rewarded in this way.' Baker v. Selden, 101 U.S., at 105. The judgment of the Court of Appeals is

[56] Reversed.
ROTH GREETING CARDS v. UNITED CARD CO.
____________________________

UnitedStatesCourtofAppealsfortheNinthCircuit,1970
429F.2d1106

HAMLEY, Circuit Judge:

Roth Greeting Cards (Roth) and United Card Company (United), both corporations, are engaged in the
greeting card business. Roth brought this suit against United to recover damages and obtain injunctive
relief for copyright infringement of seven studio greeting cards.1 After a trial to the court without a jury,
judgment was entered for defendant. Plaintiff appeals.

Roth's claim involves the production and distribution by United of seven greeting cards which bear a
remarkable resemblance to seven of Roth's cards on which copyrights had been granted. Roth employed a
writer to develop the textual material for its cards. When Roth's president determined that a textual idea
was acceptable, he would integrate that text into a rough layout of a greeting card with his suggested
design for the art work. He would then call in the company artist who would make a comprehensive
layout of the card. If the card was approved, the artist would do a finished layout and the card would go
into production.

During the period just prior to the alleged infringements, United did not have any writers on its payroll.
Most of its greeting cards came into fruition primarily through the activities of United's president, Mr.
Koenig, and its vice-president, Edward Letwenko.

The source of the art and text of the cards of United, here in question, is unclear. Letwenko was unable to
recall the origin of the ideas for most of United's cards. He speculated that the gags used may have come
from plant personnel, persons in bars, friends at a party, Koenig, or someone else. He contended that the
art work was his own. But he also stated that he visited greeting card stores and gift shows in order to
observe what was going on in the greeting card business. Letwenko admitted that he may have seen the
Roth cards during these visits or that the Roth cards may have been in his office prior to the time that he
did his art work on the United cards.

On these facts, the trial court held for defendant on alternative grounds, lack of jurisdiction and lack of
infringement of any copyrightable material.

The trial court based its jurisdictional holding on 17 U.S.C. 13. This statute provides that no action for
infringement of copyright "shall be maintained" until the provisions of Title 17 of the United States Code
with respect to the deposit of copies and registration of such work "shall have been complied with."

The provisions of that title with respect to the deposit of copies and registration, insofar as here relevant,
are 17 U.S.C. 10, 13 and 209. Under these provisions one who desires to copyright his work by
publication: (1) publishes the work with an attached notice of copyright, (2) promptly deposits, in the
copyright office or in the mail addressed to the Register of Copyrights, two completed copies of the work

1 While Roth also sought relief on the ground of unfair competition, no evidence was introduced on that phase of the case,
and the matter of unfair competition does not concern us on this appeal.
and (3) pays the prescribed fee. If these steps have been properly performed it is the duty of the Register
of Copyrights to issue a certificate of registration under the seal of the copyright office.

Roth followed the described three-step procedure in seeking copyright protection for its greeting cards
on June 6, 1966. The copyright office returned the applications for a change of category of registration.
The revised applications were placed in the mail to the copyright office on July 27, 1966, and received
there on July 29, 1966. Roth filed this action on July 27, 1966, which was the same day it mailed the
revised applications, but two days before they were received by the copyright office.

In holding that Roth failed to comply with 17 U.S.C. 13, the district court in effect held that an action is
"maintained" within the meaning of that statute when it is instituted. The court apparently reasoned
therefrom that: (1) under section 13, a district court does not acquire subject-matter jurisdiction of a
copyright infringement suit upon the filing of the complaint, if relevant revised copyright applications,
required by the copyright office, are not then on file with that office; and (2) jurisdiction is not
subsequently conferred upon receipt of the revised applications by the copyright office prior to judgment,
at least in the absence of an amended complaint filed after such event.

The cases appear to be divided on the question of whether "maintained," as used in 17 U.S.C. 13 means
"begun" or "continued." But we need not resolve that question, for there are three other reasons why, in
our opinion, the district court had subject-matter jurisdiction. First, when plaintiff placed the revised
applications in the mail on July 27, 1966, it had done everything required of it under the copyright law
with respect to the deposit of copies and registration and could therefore, on that day "maintain" that
action, giving the term "maintain" the strict construction the district court adopted; second, the revised
copyright applications, made necessary by the incorrect original classification, relate back to the date of
filing of the original applications, which was before the complaint was filed; 2 and third, the pretrial
conference order filed on December 4, 1967, constituted in effect an amended pleading which, being
subsequent to the filing of the revised applications, sufficiently satisfied the most technical application of
17 U.S.C. 13. That pretrial order does not mention the section 13 problem, for defendant did not then
advance such a contention. But it specifically recites "* * * this order shall supplement the pleadings and
govern the course of the trial of this cause. * * *"

Accordingly we conclude that the district court judgment is not sustainable on jurisdictional grounds.

Turning to the merits, the trial court found that the art work in plaintiff's greeting cards was
copyrightable, but not infringed by defendant. The trial court also found that, although copied by
defendant, the wording or textual matter of each of the plaintiff's cards in question consist of common
and ordinary English words and phrases which are not original with Roth and were in the public domain
prior to first use by plaintiff.

Arguing that the trial court erred in ruling against it on merits, Roth agrees that the textual material
involved in their greeting cards may have been in the public domain, but argues that this alone did not
end the inquiry into the copyrightability of the entire card. Roth argues that "It is the arrangement of the
words, their combination and plan, together with the appropriate art work. * * *" which is original, the
creation of Roth, and entitled to copyright protection.

2 Title 17, U.S.C. 5, establishing classification of works for registration, concludes with these words: "* * * nor shall any
error in classification invalidate or impair the copyright protection secured under this title." In Bouve v. Twentieth
Century-Fox Film Corp., 74 App.D.C. 271, 122 F.2d 51 (1941), the court, relying on this language, held that any power the
Register of Copyrights has to classify deposited material gives him no power to refuse registration of a claim of copyright,
which has been already secured by publication and notice. See also. Peter Pan Fabrics, Inc. v. Dan River Mills, Inc., 295 F.
Supp. 1366, 1368 (S.D.N.Y.1969).
In order to be copyrightable, the work must be the original work of the copyright claimant or of his
predecessor in interest. M. NIMMER, COPYRIGHT (hereafter NIMMER), 10 at 32 (1970). But the
originality necessary to support a copyright merely calls for independent creation, not novelty. Alfred Bell
& Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir. 1951). Cf. Baker v. Selden, 101 U.S. 99, 102-
103, 25 L. Ed. 841 (1879).

United argues, and we agree, that there was substantial evidence to support the district court's finding
that the textual matter of each card, considered apart from its arrangement on the cards and its
association with artistic representations, was not original to Roth and therefore not copyrightable. 3
However, proper analysis of the problem requires that all elements of each card, including text,
arrangement of text, art work, and association between art work and text, be considered as a whole.

Considering all of these elements together, the Roth cards are, in our opinion, both original and
copyrightable. In reaching this conclusion we recognize that copyright protection is not available for
ideas, but only for the tangible expression of ideas. Mazer v. Stein, 347 U.S. 201, 217, 74 S. Ct. 460, 98 L.
Ed. 630 (1954). We conclude that each of Roth's cards, considered as a whole, represents a tangible
expression of an idea and that such expression was, in totality, created by Roth. See Dorsey v. Old Surety
Life Ins. Co., 98 F.2d 872, 873 (10th Cir. 1938).

This brings us to the question of infringement. Greeting cards are protected under 17 U.S.C. 5(a) or (k)
as a book, Jackson v. Quickslip Co., Inc., 110 F.2d 731 (2d Cir. 1940), or as a print, 37 C.F.R. 202.14. They
are the embodiment of humor, praise, regret or some other message in a pictorial and literary
arrangement. As proper subjects of copyright, they are susceptible to infringement in violation of the Act.
Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).

To constitute an infringement under the Act there must be substantial similarity between the infringing
work and the work copyrighted; and that similarity must have been caused by the defendant's having
copied the copyright holder's creation. The protection is thus against copying--not against any possible
infringement caused when an independently created work coincidentally duplicates copyrighted
material. Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).

It appears to us that in total concept and feel the cards of United are the same as the copyrighted cards of
Roth. With the possible exception of one United card (exhibit 6), the characters depicted in the art work,
the mood they portrayed, the combination of art work conveying a particular mood with a particular
message, and the arrangement of the words on the greeting card are substantially the same as in Roth's
cards. In several instances the lettering is also very similar.

It is true, as the trial court found, that each of United's cards employed art work somewhat different from
that used in the corresponding Roth cards. However, "The test of infringement is whether the work is
recognizable by an ordinary observer as having been taken from the copyrighted source." White-Smith
Music Pub. Co. v. Apollo Company, 209 U.S. 1, 17, 28 S. Ct. 319, 323, 52 L. Ed. 655 (1907), Bradbury v.
Columbia Broadcasting System, Inc., 287 F.2d 478, 485 (9th Cir. 1961).

The remarkable similarity between the Roth and United cards in issue (with the possible exception of
exhibits 5 and 6) is apparent to even a casual observer. For example, one Roth card (exhibit 9) has, on its
front, a colored drawing of a cute moppet suppressing a smile and, on the inside, the words "i wuv you."
With the exception of minor variations in color and style, defendant's card (exhibit 10) is identical.
Likewise, Roth's card entitled "I miss you already," depicts a forlorn boy sitting on a curb weeping, with an

3 Thus, if United had copied only the textual materials, which were not independently copyrightable, United might have
been able to do so with impunity. Jackson v. Quickslip Co., 110 F.2d 731 (2d Cir. 1940).
inside message reading "* * * and You Haven't even Left * * *" (exhibit 7), is closely paralleled by United's
card with the same caption, showing a forlorn and weeping man, and with the identical inside message
(exhibit 8).

The question remains whether United did in fact copy the Roth cards. Since direct evidence of copying is
rarely available, copying may be established by proof of access and substantial similarity. NIMMER
141.2 at 613. Although in some circumstances the mere proof of access and substantial similarity will not
demand that the trier automatically find copying, the absence of any countervailing evidence of creation
independent of the copyrighted source may well render clearly erroneous a finding that there was not
copying.

In the present case there was clear and uncontradicted testimony establishing United's access to the Roth
cards. United brought Roth cards to its offices. It sent its employees out to gift shows and retail stores
where the Roth cards were on display to observe "what the competition was doing." In addition, there was
testimony almost compelling the inference that it was United's practice to look at the cards produced by 2
other companies and make similar cards for sale under the United label. These circumstances, together
with the marked similarity between the cards on which this suit was brought, with the possible exception
of one card, convince us that each of United's cards in question, considered as combined compositions of
art and text, were in fact copied from the Roth cards. It follows that there was infringement. See Detective
Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir. 1940).

The judgment is therefore reversed and the cause is remanded for further proceedings consistent with
this opinion.

KILKENNY, Circuit Judge (dissenting).

The majority agrees with a specific finding of the lower court that the words on the cards are not the
subject of copyright. By strong implication, it likewise accepts the finding of the trial court that the art
work on the cards, although subject to copyright, was not infringed. Thus far, I agree.

I cannot, however, follow the logic of the majority in holding that the uncopyrightable words and the
imitated, but not copied art work, constitutes such total composition as to be subject to protection under
the copyright laws. The majority concludes that in the overall arrangement of the text, the art work and
the association of the art work to the text, the cards were copyrightable and the copyright infringed. This
conclusion, as I view it, results in the whole becoming substantially greater than the sum total of its parts.
With this conclusion, of course, I cannot agree.

The majority relies principally on Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432 (2d Cir.
1940). This case, as I read it, does not even intimate that the whole can exceed the sum total of its parts. It
involved an intimation of the "Superman" image by a rival company. In finding infringement, the
"Superman" court emphasized that "So far as the pictorial representations and verbal descriptions of
'Superman' are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents
and literary expressions original with the author, they are proper subjects of copyright and susceptible of
infringement because of the monopoly afforded by the Act." p. 433 (Emphasis added.) Moreover, the
"Superman" case involved the creation of a character, a written dialogue and description which were
clearly protected by copyright law in much the same way that a dialogue and description found in a novel
is protected. The district court1 in the "Superman" case found that both the art work and the text
materials were copyrightable and that each was infringed. In the case before us, the findings of the trial
judge are in direct opposition to appellant's contentions. The language of the district court in "Superman"

11 Detective Comics, Inc. v. Bruns Publications, Inc., 28 F. Supp. 399, 400 (D.N.Y. 1939).
is worthy of note: "Short of 'Chinese copies' of the plaintiff's 'Superman' strip, the defendant could hardly
have gone further than it has done." P. 400. The challenged cards before us, I submit, in no way resemble
"Chinese copies" of appellant's material. Other cases cited by the majority are no more in point than
Detective Comics.

Aside from the above, I call attention to the fact that a number of experts appeared in the lower court and
testified that the phrases on the cards were in common use and that Roth's writer often obtained his ideas
from others. In these circumstances, we should not set aside the findings of the lower court. Williams v.
Kaag Manufacturers, Inc., 338 F.2d 949 (9th Cir. 1964). Beyond that, ordinary phraseology within the
public domain is not copyrightable. Dorsey v. Old Surety Life Insurance Co., 98 F.2d 872 (10th Cir. 1938);
American Code Co. v. Bensinger, 282 F. 829 (2d Cir. 1922).

Feeling, as I do, that the copyright act is a grant of limited monopoly to the authors of creative literature
and art, I do not think that we should extend a 56-year monopoly in a situation where neither
infringement of text, nor infringement of art work can be found. On these facts, we should adhere to our
historic philosophy requiring freedom of competition. I would affirm.
 HODGE E. MASON and HODGE MASON MAPS, INC., Plaintiffs-Appellants,
v.
MONTGOMERY DATA, INC., ET AL., Defendants-Appellees.
No. 91-2305.

United States Court of Appeals, Fifth Circuit.

July 28, 1992.

Thomas G. Gee, Martin L. McGregor, Richard S. Siluk, Baker & Botts, Houston, Tex., for plaintiffs-
appellants.

136*136 David B. Wolf, Walter, Conston, Alexander & Green, New York City, amicus curiae for Rand
McNally & Co.

Jerry Sadler, Houston, Tex., amici curiae for Key Maps, Thomas Bros. Map Co. and Mapsco.

Lionel M. Schooler, Gilpin, Paxson & Bersch, Houston, Tex., for Landata, Inc. of Houston.

James B. Gambrell, Marc L. Delflache, Eugene R. Montalvo, Pravel, Gambrell, Hewitt, Kimball & Krieger,
Houston, Tex., for Montgomery Data & Conroe Title.

Before SNEED[1], REAVLEY and BARKSDALE, Circuit Judges.

REAVLEY, Circuit Judge:

Hodge E. Mason, Hodge Mason Maps, Inc., and Hodge Mason Engineers, Inc. (collectively Mason) sued
Montgomery Data, Inc. (MDI), Landata, Inc. of Houston (Landata), and Conroe Title & Abstract Co.
(Conroe Title), claiming that the defendants infringed Mason's copyrights on 233 real estate ownership
maps of Montgomery County, Texas. The district court initially held that Mason cannot recover statutory
damages or attorney's fees for any infringement of 232 of the copyrights. The court later held that Mason's
maps are not copyrightable under the idea/expression merger doctrine, and granted summary judgment
for the defendants. We agree with Mason that the maps are copyrightable, so we reverse the district
court's judgment and remand the case. But we agree with the district court that, if Mason proves that the
defendants infringed his copyrights,[2] he can only recover statutory damages and attorney's fees for the
infringements of one of the 233 maps.

I. BACKGROUND
Between August 1967 and July 1969, Mason created and published 118 real estate ownership maps that,
together, cover all of Montgomery County. The maps, which display copyright notices, pictorially portray
the location, size, and shape of surveys, land grants, tracts, and various topographical features within the
county. Numbers and words on the maps identify deeds, abstract numbers, acreage, and the owners of
the various tracts. Mason obtained the information that he included on the maps from a variety of sources.
[3]
Relying on these sources, Mason initially determined the location and dimensions of each survey in the
county, and then drew the corners and lines of the surveys onto topographical maps of the county that
were published by the United States Geological Survey (USGS). [4] He then determined the location of the
property lines of the real estate tracts within each survey and drew them on the USGS maps. Finally,
Mason traced the survey and tract lines onto transparent overlays, enlarged clean USGS maps and the
overlays, added names and other information to the overlays, and combined the maps and overlays to
print the final maps. Mason testified that he used substantial judgment and discretion to
reconcile 137*137 inconsistencies among the various sources, to select which features to include in the
final map sheets, and to portray the information in a manner that would be useful to the public. From 1970
to 1980, Mason revised the original maps and eventually published 115 new maps with copyright notices,
for a total of 233 maps. Mason sold copies of his maps individually and in sets.

Mason's infringement claims are based on the defendants' use of his maps as part of a geographical
indexing system that Landata created to continuously organize and store ever-changing title information
on each tract in Montgomery County. To create this sytem, Landata purchased a set of Mason's maps and
reorganized them by cutting and pasting them into 72 map sheets. Landata then attached a transparent
overlay to each of the 72 sheets, and depicted on these overlays numerous updates and corrections to
the information on Mason's maps. Landata arbitrarily assigned identification numbers ("arb numbers") to
tracts or areas within the county, and added these numbers to the overlays. Using this process, Landata
created an inked mylar "master overlay" for each of the 72 reorganized map sheets. Landata then made
sepia copies of the master overlays, and began registering ownership and other changes on the sepia
copies from the hundreds of land grants that are recorded in the county each day. Using this system, the
defendants are able to retrieve current ownership and other information on any tract by locating its arb
number on the appropriate overlay and entering that number into a computer database that contains data
on each tract.

In 1985, several title companies, including Conroe Title, incorporated MDI as a joint title plant. MDI and
Landata then entered into a series of agreements under which Conroe Title and MDI's other shareholders
can use Landata's system when they issue title insurance policies. On September 17, 1985, Landata
asked Mason for permission to use his maps as part of its system, but Mason denied the request because
Landata refused to pay a licensing fee. Landata then provided its products to MDI without Mason's
permission. Each of MDI's shareholders purchased an original set of Mason's maps, and either MDI or the
shareholders reorganized the maps from 118 to 72 map sheets according to Landata's specifications.
Landata provided MDI with a set of sepia copies of the master overlays for each set of reorganized maps
and with access to its computer database. Annually from 1982 through 1986, and again in 1989, Landata
or MDI produced new, updated editions of the master overlays.

Mason registered the copyright for one of the original 118 maps in October 1968. After learning of
Landata's use of his maps, Mason registered the copyrights for the remaining 117 original maps and the
115 revised maps between October and December 1987. Mason filed this suit in September 1988,
claiming infringement of his 233 copyrights under 17 U.S.C. 106, and seeking statutory damages and
attorney's fees under 17 U.S.C. 504-05. In December 1989, the defendants sought a partial summary
judgment that, even if Mason proves copyright infringement, 17 U.S.C. 412 precludes an award of
statutory damages or attorney's fees for any infringement of the 232 maps that Mason registered in 1987.
The district court granted this motion on June 1, 1990. Mason v. Montgomery Data, Inc., 741 F.Supp.
1282, 1287 (S.D.Tex.1990). In September 1990, Mason filed a motion for partial summary judgment that
the defendants had infringed his copyrights. The defendants countered with motions for summary
judgment in which they asserted that Mason's maps are not copyrightable and, even if they are, the
defendants' use of the maps does not constitute infringement. The district court granted the defendants'
motions after holding that Mason's maps are not copyrightable because the idea embodied in the maps is
inseparable from the maps' expression of that idea. Mason v. Montgomery Data, Inc., 765 F.Supp. 353,
356 (S.D.Tex.1991). The court dismissed Mason's claims with prejudice and awarded the defendants
costs and attorney's fees.

138*138 II. DISCUSSION

A. THE COPYRIGHTABILITY OF MASON'S MAPS
1. The Idea/Expression Merger Doctrine
The Copyright Act extends copyright protection to "original works of authorship fixed in any tangible
medium of expression." 17 U.S.C.A. 102(a) (West Supp. 1992). The scope of that protection, however,
is not unlimited. "In no case does copyright protection for an original work of authorship extend to
any idea, ... regardless of the form in which it is described, explained, illustrated, or embodied in such
work." Id. 102(b) (emphasis added). Thus, while a copyright bars others from copying an author's
original expression of an idea, it does not bar them from using the idea itself. "Others are free to utilize the
`idea' so long as they do not plagiarize its `expression.'" Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 741 (9th Cir.1971). In some cases, however, it is so difficult to distinguish
between an idea and its expression that the two are said to merge. Thus, when there is essentially only
one way to express an idea, "copying the `expression' will not be barred, since protecting the `expression'
in such circumstances would confer a monopoly of the `idea' upon the copyright owner free of the
conditions and limitations imposed by the patent law." Id. at 742. By denying protection to an expression
that is merged with its underlying idea, we "prevent an author from monopolizing an idea merely by
copyrighting a few expressions of it." Toro Co. v. R & R Products Co., 787 F.2d 1208, 1212 (8th Cir.1986).
[5]

The district court applied these principles to the present case and concluded that "the problem with the
Hodge Mason maps is ... that [they] express the only pictorial presentation which could result from a
correct interpretation of the legal description and other factual information relied upon by the plaintiffs in
producing the maps." Mason, 765 F.Supp. at 355. The court believed that,

[t]o extend copyright protection to the Hodge Mason maps, which resulted from facts essentially in the
public domain, would give the plaintiffs a monopoly over the facts. In other words, anyone who has the
desire and ability to correctly interpret the legal descriptions and toil through the factual information relied
upon by the plaintiffs in creating their maps, would create a pictorial presentation so substantially similar to
the plaintiffs['] that they could be accused of copyright infringement. This result would clearly upset
Congress' intent to balance the "competing concerns of providing incentive to authors to create and of
fostering competition in such creativity."

Id. at 356 (quoting Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3rd
Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984)). The court thus
concluded that "the plaintiffs' idea to create the maps, based on legal and factual public information, is
inseparable from its expression embodied within the maps, and hence not subject to copyright
protection." Id.

We agree with Mason that the district court erred in applying the merger doctrine in this case. To
determine whether the doctrine is applicable in any case, the court must "focus on whether the idea is
capable of various modes of expression." Apple Computer, 714 F.2d at 1253. Thus, the court must first
identify the idea that the work expresses, and then attempt to distinguish that idea from the author's
expression 139*139 of it. If the court concludes that the idea and its expression are inseparable, then the
merger doctrine applies and the expression will not be protected. Conversely, if the court can distinguish
the idea from its expression, then the expression will be protected because the fact that one author has
copyrighted one expression of that idea will not prevent other authors from creating and copyrighting their
own expressions of the same idea. In all cases, "[t]he guiding consideration in drawing the line is the
preservation of the balance between competition and protection reflected in the patent and copyright
laws." Herbert Rosenthal Jewelry, 446 F.2d at 742.

The district court determined that Mason's idea, "which includes drawing the abstract and tract
boundaries, indicating the ownership name, the tract size, and the other factual information" on a map of
Montgomery County, was "to create the maps, based on legal and factual public information." Mason, 765
F.Supp. at 356. Mason argues that the court clearly erred in finding that this idea can be expressed in only
one or a limited number of ways. We agree. The record in this case contains copies of maps created by
Mason's competitors that prove beyond dispute that the idea embodied in Mason's maps is capable of a
variety of expressions. Although the competitors' maps and Mason's maps embody the same idea, they
differ in the placement, size, and dimensions of numerous surveys, tracts, and other features. The record
also contains affidavits in which licensed surveyors and experienced mapmakers explain that the
differences between Mason's maps and those of his competitors are the natural result of each
mapmaker's selection of sources, interpretation of those sources, discretion in reconciling inconsistencies
among the sources, and skill and judgment in depicting the information. [6]

MDI argues that this evidence is irrelevant because there is no proof that Mason and his competitors
obtained their information from the same sources. But the fact that different mapmakers with the same
idea could reach different conclusions by relying on different sources only supports our result. Whether
Mason and his competitors relied on different sources, or interpreted the same sources and resolved
inconsistencies among them differently, or made different judgments as to how to best depict the
information from those sources, the differences in their maps confirm the fact that the idea embodied in
Mason's maps can be expressed in a variety of ways. By selecting different sources, or by resolving
inconsistencies among the same sources differently, or by coordinating, arranging, or even drawing the
information differently, other mapmakers may create and indeed have created
expressions 140*140 of Mason's idea that differ from those that Mason created. [7]

Finally, the defendants contend that this court's decision in Kern River Gas Transmission Co. v. Coastal
Corp., 899 F.2d at 1458, requires application of the merger doctrine in this case. Kern River concerned the
copyrightability of maps on which Kern River Gas Transmission Company (Kern River) depicted the
location that it proposed for construction of a gas pipeline. The idea at issue in Kern Riverwas simply the
placing on a map of Kern River's certain "proposed location for a prospective pipeline." Id. at 1464. This
court concluded that that idea merged with Kern River's expression because there was only one way to
effectively express that idea. Id.

The defendants argue that the merger doctrine applies in this case because drawing lines on a public map
is the only way to depict the locations of surveys and boundary lines in Montgomery County, just as it was
the only way to depict the location of a pipeline in Kern River. But the distinction between Kern River and
this case is not in the methods available for depicting an object's location on a map, but in the ideas that
the maps in the two cases embody. We cannot determine whether an idea is capable of a variety of
expressions until we first identify what that idea is. A court's decision whether to apply the merger doctrine
often depends on how it defines the author's idea. For this reason, in defining the idea the court should be
guided by "the balance between competition and protection reflected in the patent and copyright
laws." Herbert Rosenthal Jewelry, 446 F.2d at 742.[8]

We focus in this case on an earlier point in the mapping process, a point prior to the selection of
information and decisions where to locate tract lines. The idea here was to bring together the available
information on boundaries, landmarks, and ownership, and to choose locations and an effective pictorial
expression of those locations. That idea and its final expression are separated by Mason's efforts and
creativity that are entitled to protection from competitors. The evidence in this case demonstrates that a
mapmaker who desires to express the idea of depicting the location and ownership of property in
Montgomery County in map form must select information from numerous sources, reconcile
inconsistencies among those sources, and depict the information according to the mapmaker's skill and
judgment. Although Mason sought to depict the information accurately, the conflicts among the sources
and the limitations inherent in the process of representing reality in pictorial map form required him to
make choices that resulted in independent expression. Extending protection to that expression will not
grant Mason a monopoly over the idea, because other mapmakers can express the same idea differently.
The protection that each map receives extends only to its original expression, and neither the facts nor the
idea embodied in the maps is protected. 141*141 "[T]he facts and ideas ... are free for the taking.... "[T]he
very same facts and ideas may be divorced from the context imposed by the author, and restated or
reshuffled by second comers, even if the author was the first to discover the facts or to propose the
ideas." Feist, 111 S.Ct. at 1289 (quoting Jane C. Ginsburg, Creation and Commercial Value: Copyright
Protection of Works of Information, 90 COLUM.L.REV. 1865, 1868 (1990)).

For these reasons, we conclude that the district court erred by applying the merger doctrine in this case.
Because the idea embodied in Mason's maps can be expressed in a variety of ways, the merger doctrine
does not render Mason's expression of that idea uncopyrightable.

2. The "Originality" Requirement

Landata contends that, even if the merger doctrine does not apply, Mason's maps are uncopyrightable
because they are not "original" under Feist. Although the district court applied the merger doctrine to hold
that Mason's maps are not copyrightable, it found that "the problem with the Hodge Mason maps is not a
lack of originality." Mason, 765 F.Supp. at 355. We agree that Mason's maps are original. Originality does
not require "novelty, ingenuity, or aesthetic merit." H.R.REP. No. 1476, 94th Cong., 2d Sess. 51
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5664; see also Feist, 111 S.Ct. at 1287. Instead, originality
"means 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, 111 S.Ct. at 1287 (citing 1
M. Nimmer & D. Nimmer, COPYRIGHT 2.01[A]-[B] (1990)). The parties do not dispute Mason's claim
that he independently created his maps, but Landata contends that they do not possess the degree of
creativity necessary to qualify them as original under Feist.

Mason's maps pass muster under Feist because Masons' selection, coordination, and arrangement of the
information that he depicted are sufficiently creative to qualify his maps as original "compilations" of facts.
[9]
Under the originality standard, bare facts are never copyrightable "because facts do not owe their origin
to an act of authorship." Id. at 1288. A compilation of facts, however, may be copyrightable if the author
made choices as to "which facts to include, in what order to place them, and how to arrange the collected
data so that they may be used effectively by readers." Id. at 1289. The author's selection, coordination,
and arrangement of facts, however, are protected only if they were "made independently ... and entail a
minimal degree of creativity." Id.

In Feist, the Court held that the defendant, who copied a list of names, towns, and telephone numbers
from the white pages of the plaintiff's telephone directory, did not copy anything that was "original" to the
plaintiff. Id. at 1296. The Court explained that the plaintiff's selection of facts to publish the name, town,
and telephone number of each person who applied for telephone service "lacks the modicum of
creativity necessary to transform mere selection into copyrightable expression." Id. And the plaintiff's
arrangement of these facts, which involved "nothing more than list[ing] ... [the] subscribers in alphabetical
order," is "not only unoriginal, it is practically inevitable." Id. at 1297. Because the plaintiff "simply [took]
the data provided by its subscribers and list[ed] it alphabetically by surname ..., [t]he end product is a
garden-variety white pages directory, devoid of even the slightest trace of creativity." Id. at 1296.

But the evidence in this case demonstrates that Mason exercised sufficient creativity when he created his
maps. In his deposition and affidavit, Mason explained the choices that he independently made to select
information from numerous and sometimes conflicting sources, and to depict that information on his maps.
[10]
Mason's 142*142 compilation of the information on his maps involved creativity that far exceeds the
required minimum level.

Mason's maps also possess sufficient creativity to merit copyright protection as pictorial and graphic works
of authorship. Historically, most courts have treated maps solely as compilations of
facts. See Wolf, supra note 4, at 227. The Copyright Act, however, categorizes maps not as factual
compilations but as "pictorial, graphic, and sculptural works" a category that includes photographs and
architectural plans. 17 U.S.C.A. 101 (West Supp.1992). Some courts have recognized that maps, unlike
telephone directories and other factual compilations, have an inherent pictorial or photographic nature that
merits copyright protection. See, e.g., Rockford Map Publishers, Inc. v. Directory Service Co., 768 F.2d
145, 149 (7th Cir.1985) ("Teasing pictures from the debris left by conveyancers is a substantial change in
the form of the information. The result is copyrightable...."), cert. denied, 474 U.S. 1061, 106 S.Ct. 806, 88
L.Ed.2d 781 (1986); United States v. Hamilton, 583 F.2d 448, 451 (9th Cir.1978) ("Expression in
cartography is not so different from other artistic forms seeking to touch upon external realities that unique
rules are needed to judge whether the authorship is original."). We agree with these courts. As Wolf
explains in his article:

It is true that maps are factual compilations insofar as their subject matter is concerned. Admittedly, most
maps present information about geographic relationships, and the "accuracy" of this presentation, with its
utilitarian aspects, is the reason most maps are made and sold. Unlike most other factual compilations,
however, maps translate this subject-matter into pictorial or graphic form.... Since it is this pictorial or
graphic form, and not the map's subject matter, that is relevant to copyright protection, maps must be
distinguished from non-pictorial fact compilations.... A map does not present objective reality; just as a
photograph's pictorial form is central to its nature, so a map transforms reality into a unique pictorial form
central to its nature.

Wolf, supra note 4, at 239-40.

The level of creativity required to make a work of authorship original "is extremely low; even a slight
amount will suffice." Feist, 111 S.Ct. at 1287. We think that the process by which Mason, using his own
skill and judgment, pictorially portrayed his understanding of the reality in Montgomery County by drawing
lines and symbols in particular relation to one another easily exceeds that level.

Because Mason's maps possess sufficient creativity in both the selection, coordination, and arrangement
of the facts that they depict, and as in the pictorial, graphic nature of the way that they do so, we find no
error in the district court's determination that Mason's maps are original.

B. AVAILABILITY OF STATUTORY DAMAGES

Mason sought statutory damages rather than actual damages. The district court held that section 412 of
the Copyright Act precludes an award of statutory damages (and attorney's fees) for any alleged
infringement of all but one of Mason's 143*143 maps. See Mason, 741 F.Supp. at 1285-87. Mason calls
that holding error, but we agree with the district court. Section 412 provides that:

no award of statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made
for ... (2) any infringement of copyright commenced after first publication of the work and before the
effective date of its registration, unless such registration is made within three months after the first
publication of the work.

17 U.S.C.A. 412 (West Supp.1992). Mason argues that Congress' use of the phrase "for any
infringement" in this section reveals its intent that courts treat each of a defendant's infringing acts
separately and deny statutory damages only for those specific infringing acts that commenced prior to
registration. Thus, Mason argues, section 412 allows him to recover statutory damages and attorney's
fees for any infringement that the defendants commenced after he registered the copyrights, even though
they commenced other, separate infringements of the same work prior to registration. The district court
rejected this argument because it interpreted the term "infringement" to mean all of a defendant's acts of
infringement of any one work. Thus, the court interpreted "the words `commencement of infringement' to
mean the first act of infringement in a series of on-going separate infringements." 741 F.Supp. at 1286.

We find section 412 to be ambiguous and open to either interpretation. But we find support for the district
court's interpretation in the legislative history of section 412. The House Report explains that "clause (2)
[of section 412] would generally deny an award of [statutory damages and attorney's fees] where
infringement takes place before registration." H.R.REP. No. 1476 at 158, reprinted in 1976 U.S.C.C.A.N.
at 5659, 5774 (emphasis added). In contrast to the "for any infringement" language of section 412, this
language reveals Congress' intent that statutory damages be denied not only for the particular
infringement that a defendant commenced before registration, but for all of that defendant's infringements
of a work if one of those infringements commenced prior to registration.

In addition to the legislative history of section 412, we find support for the district court's interpretation in
17 U.S.C. 504. We look to section 504 for assistance in understanding section 412 because section 412
bars an award of statutory damages "as provided by section 504." Section 504 provides that:

the copyright owner may elect, at any time before final judgment is rendered, to recover, instead of actual
damages and profits, an award of statutory damages for all infringements involved in the action with
respect to any one work, for which any one infringer is liable individually, or for which any two or more
infringers are liable jointly and severally, in a sum of not less than $500 or more than $20,000 as the court
considers just.

17 U.S.C.A. 504(c)(1) (West Supp.1992) (emphasis added). Under this section, the total number of
"awards" of statutory damages (each ranging from $500 to $20,000) that a plaintiff may recover in any
given action depends on the number of works that are infringed and the number of individually
liable infringers, regardless of the number of infringements of those works.[11] So if a plaintiff proves
that one144*144 defendant committed five separate infringements of one copyrighted work, that plaintiff is
entitled to only one award of statutory damages ranging from $500 to $20,000. And if a plaintiff proves
that two different defendants each committed five separate infringements of five different works, the
plaintiff is entitled to ten awards, not fifty. It would be inconsistent to read section 504 to include all of one
defendant's infringements of one work within "an award of statutory damages," and then read section 412
to treat each infringement separately for purposes of barring that award.

Moreover, section 504 provides that the plaintiff may elect to recover an award of statutory damages
for all of one defendant's infringements of any one work "instead of actual damages and profits." Thus, if
all of one defendant's infringements commenced after registration, the plaintiff may not elect to recover
statutory damages for some of those infringements and actual damages for the rest. See H.R.REP. No.
1476 at 161, reprinted in 1976 U.S.C.C.A.N. at 5659, 5777 ("Recovery of actual damages and profits
under section 504(b) or of statutory damages under section 504(c) is alternative."). Under Mason's
argument, a plaintiff could recover actual damages for infringements that a defendant commenced before
registration, and still recover statutory damages for infringements of the same work that the same
defendant commenced after registration. This argument must fail because "an award of statutory
damages" which section 504 giveth and section 412 taketh away encompasses all of one
defendant's infringements of one work.

Finally, our conclusion accords with the purpose of section 412. Congress included section 412 in the
Copyright Act of 1976 because "[c]opyright registration for published works, which is useful and important
to users and the public at large, would no longer be compulsory [under the 1976 Act], and should
therefore be induced in some practical way." H.R.REP. No. 1476 at 158, reprinted in 1976 U.S.C.C.A.N. at
5659, 5774. Denying an "award of the special or `extraordinary' remedies of statutory damages or
attorney's fees where ... infringement commenced after publication and before registration" encourages
early registration of copyrights. Id. As one court has noted, "[t]he threat of such a denial would hardly
provide a significant motivation to register early if the owner of the work could obtain those remedies for
acts of infringement taking place after a belated registration." Singh v. Famous Overseas, Inc., 680
F.Supp. 533, 536 (E.D.N.Y. 1988).

We thus conclude that a plaintiff may not recover an award of statutory damages and attorney's fees for
infringements that commenced after registration if the same defendant commenced an infringement of the
same work prior to registration. Mason published his 233 maps between 1967 and 1980, and registered
the copyright in one map in October 1968. By the time he registered the remaining 232 copyrights in 1987,
the defendants had reorganized Mason's maps and created and used the overlays and computer
database. As to each work and each defendant, the alleged acts of infringement that could give rise to an
award of statutory damages had commenced prior to registration of 232 of the works. We thus uphold this
ruling of the district court. If Mason proves infringement, he may elect to recover statutory damages and
attorney's fees only for the infringements of the map that he registered in 1968.

C. DEFENDANTS' COSTS AND ATTORNEY'S FEES

Because we reverse the district court's final judgment, the defendants are not presently entitled to costs
and attorney's fees as "prevailing parties." See 17 U.S.C. 505. We thus reverse the court's
amended 145*145 final judgment of June 5, 1991 that awarded costs and attorney's fees to the
defendants.

III. CONCLUSION
We REVERSE the court's judgments dismissing plaintiff's action and awarding the defendants costs and
attorney's fees, and we REMAND the case for further proceedings consistent with this opinion.

REVERSED and REMANDED.

 ALEXANDER LINDSAY, Plaintiff
-against-
The Wrecked and Abandoned Vessel R.M.S. TITANIC, HER
ENGINES, TACKLE, EQUIPMENT, FURNISHINGS, Located
Within One Nautical Mile of a Point Located at 41, 43'32"
North Latitude and 49, 56'49" West, and ARTIFACTS, and
VIDEO Located at 17 Battery Place, New York, NY, in rem, and
R.M.S. TITANIC, INC.,TITANIC VENTURES LIMITED
PARTNERSHIP, OCEANIC RESEARCH AND EXPLORATION
LIMITED, SUAREZ CORPORATION INDUSTRIES, INC., and
DISCOVERY COMMUNICATIONS, INC., d.b.a. THE DISCOVERY
CHANNEL, in personam, Defendants.[1]
3
United States District Court Southern District of New York.
October 13, 1999.
4
OPINION & ORDER
5
HAROLD BAER, JR., District Judge:
6
The plaintiff, Alexander Lindsay, commenced this lawsuit in 1997, seeking damages
based upon his share of the revenues generated by the salvage operations conducted at
the wreck site of the famous sunken vessel, the R.M.S. Titanic. Defendants R.M.S. Titanic,
Inc. ("RMST") and Suarez Corporation Inc. ("SCI") answered and asserted counterclaims
against the plaintiff for copyright infringement. The plaintiffs' amended complaint joined
defendant Discovery Communications, Inc. ("DCI") and added claims of copyright
infringement against RMST, SCI and DCI. Pursuant to Rule 12(b)(6) of the Federal Rules of
Civil Procedure, the defendants now move [2] to dismiss the plaintiffs copyright claims
alleged in the amended complaint.[2] The plaintiff crossmoves for summary judgment as
to both his salvage and copyright claims. For the reasons discussed below, the
defendants' motions are DENIED in part and GRANTED in part, and the Court reserves
decision on the plaintiffs motion.
7
I. BACKGROUND
8
The plaintiff, a citizen of the United Kingdom and resident of the State of New York, is an
independent documentary film maker engaged in the business of creating, producing,
directing, and filming documentaries: (Amended Complaint ("Am. Compl.") 4.)
Defendant R.M.S. Titanic, Inc. ("RMST") is a publicly traded U.S. corporation, organized
under the laws of the State of Florida, which conducts business within and has its office
and principal place of business in New York City. (Am. Compl. 8.) Defendant George
Tulloch ("Tulloch") is a shareholder, president and member of the board of directors of
RMST. (Am. Compl. 7.) Defendant Titanic Ventures Limited Partnership ("TVLP") is a
limited partnership organized under the laws of Connecticut and currently doing business
in the State of New York.[3] (Am. Compl. 9.) Defendant Oceanic Research and [3]
Exploration Limited ("OREL") is a Delaware corporation and general partner of TVLP.
Defendant Tullqch is also the president and sole shareholder of OREL (defendants RMST,
Tulloc, TVLP and OREL collectively as "RMST"). Defendant Suarez Corporation, Inc. ("SCI")
is an Ohio corporation doing business in the State of New York. Defendant Discovery
Communications, Inc. ("DCI") is a Maryland corporation doing business as "The Discovery
Channel", and is engaged in the business of making, financing and distributing
documentary films. (Am. Compl. 13.)
9
In 1993, RMST was awarded exclusive status as salvor-in-possession of the Titanic wreck
site and is therefore authorized to carry on salvage operations at the vessel's wreck
site. (Am. Compl. 8, 20.) As a condition of obtaining these rights, RMST allegedly
agreed to maintain all the artifacts it recovered during the salvage operations for
historical verification, scientific education, and public awareness. (Am. Compl. 22.)
10
In 1994, the plaintiff, under contract with a British television company, filmed and
directed the British documentary film, "Explorers of the Titanic," a chronicle of RMST's
third salvage expedition of the Titanic. (Am. Compl. 25.) To film this documentary,
Lindsay sailed with RMST and the salvage expedition crew to the wreck site and
remained at sea for approximately one month. (Am. Compl. 27.) The plaintiff alleges
that during and after filming this documentary in 1994, he conceived a new film project
for the Titanic wreck using high illumination lighting equipment. (Am. Compl. 28.)
11
The plaintiff later discussed his idea with defendant George Tulloch and, according to the
plaintiff, the two agreed to work together on the venture. (Am. Compl. 29.) In March
1995, the plaintiff traveled to New York and developed a comprehensive business plan
for the new film project entitled, ''Titanic: A Memorial Tribute." (Am. Compl 30.) Tulloch
allegedly informed the [4] plaintiff that he would agree to the plan which purported to
include provisions for compensating Lindsay for his work on the project but that
Tulloch would have to obtain approval from the RMST Board of Directors. (Am. Compl.
31.) The plaintiff agreed to join RMST to raise money not only for the film project, but for
other aspects of the 1996 salvage operation as well. (Am. Compl. 32.)
12
Lindsay moved into an office at RMST in and around April 1995. Around this time, tulloch
repeatedly told Lindsay that he would obtain approval from RMSTs Board of Directors for
a contract for the plaintiff based upon the terms of Lindsay's film plan. (Am. Compl.
33.) The contract was to include terms of Lindsay's compensation, including sharing in
the profits derived from any film, video and still photographs obtained from the 1996
salvage operation. (Am. Compl. 36.) This contract was never executed.
13
As part of his pre-production efforts, the plaintiff created various storyboards for the film,
a series of drawings which incorporated images of the Titanic by identifying specific
camera angles and shooting sequences "that reflect[ed] Plaintiff's [sic] creative
inspiration and force behind his concept for shooting the Subject Work." (Am. Compl.
38.) The plaintiff also alleges that he, along with members of his film team, designed the
huge underwater light towers that were later used to make the film. (Am. Compl.
43.) Lindsay also "personally constructed the light towers" and thereafter "for
approximately 3-4 weeks directed, produced, and acted as the cinematographer of the
Subject Work; underwater video taping of the Titanic wreck site, and otherwise
participated in the 1996 salvage operation." (Am. Compl. 45-46.) He also directed the
filming of the wreck site from on board the salvage vessel "Ocean Voyager" after leading
daily planning sessions with the crew of the Nautile, the submarine used to transport the
film equipment and photographers to the underwater wreck site. (Am. Compl. 47.) The
purpose of these sessions was to provide the [5] photographers with "detailed
instructions for positioning and utilizing the light towers." Id.)
14
The plaintiff now alleges that he was never fully compensated for his services and
that, inter alia, the defendants are now "unlawfully profiting from the exploitation of the"
film project at issue. (Am. Compl. 57-60.)
15
The plaintiff originally brought this action under the Court's admiralty jurisdiction to
enforce his salvage claims against defendants RMS Titanic, Inc., Titanic Ventures Limited
Partners, Oceanic Research and Exploration Limited (collectively as "RMST"), and Suarez
Corporation.
16
These defendants moved to dismiss the plaintiffs salvage claims. By order dated
September 2, 1998, I denied the motion to dismiss, having found that the plaintiff had
met his burden of pleading all the necessary elements for bringing a salvage claim. See
Lindsay v. Titanic, No. 97 Civ. 9248, 1998 WL 557591 (S.D.N.Y. Sept. 2, 1998).
17
RMST and SCI then answered the complaint and included counterclaims for copyright
infringement arising from the plaintiff's use of certain video footage taken from the
wreck during the 1996 expedition. By order dated April 9, 1999, I granted the plaintiffs
motion to amend his complaint to add copyright infringement claims against RMST and
SCI and to join Discovery Communications, Inc. ("DCI") d/b/a The Discovery Channel, for
copyright infringement of what appears to be the same footage at issue in the
defendants' counterclaims.
18
The plaintiffs amended complaint now includes 13 causes of action, including those
based on copyright infringement, salvage claims, and state law causes of action for
fraud, breach of contract, and conversion. The defendants now move pursuant to Rule
12(b)(6) of the Federal Rules of Civil Procedure to dismiss Lindsay's copyright claims, and
the plaintiff cross-moves for summary judgment on his copyright and salvage claims.
19
[6] II. DISCUSSION
20
A. Standards for Motion to Dismiss
21
Dismissal of a complaint pursuant to Rule 12(b)(6) is permitted "only where itappears
beyond doubt that the plaintiff can prove no set of facts in support of the claim which
would entitle him to relief." Scotto v. Almenas,143 F.3d 105, 109-10 (2d Cir. 1998). "The
task of the court in ruling on a Rule 12(b)(6) motion is 'merely to assess the legal
feasibility of the complaint not to assay the weight of the evidence which might be
offered in support thereof.'" Cooper v. Parsky, 140 F.3d 433, 440 (2d Cir. 1998)
(quoting Ryder Energy Distribution Com. v. Merrill Lynch Commodities, Inc., 748 F.2d 774,
779 (2d Cir. 1984)). In deciding a 12(b)(6) motion, the Court must accept as true all
material facts alleged in the complaint and draw all reasonable inferences in the
nonmovant's favor. See Thomas v. City of New York, 143 F.3d 31, 36 (2d Cir. 1998).
22
B. Copyright Claims
23
Pleading Requirements
24
To withstand a motion to dismiss, a complaint based on copyright infringement must
allege: (1) which specific original works are the subject of the copyright claim; (2) that
the plaintiff owns the copyrights in those works; (3) that the copyrights have been
registered in accordance with the statute; and (4) "by what acts during what time" the
defendant infringed the copyright. Kelly v. L.L. Cool J., 145 F.R.D. 32, 35 (1992), aff'd, 23
F.3d 398 (2d Cir.), cert. denied, 513 U.S. 950 (1994).
25
Although the complaint is not a model of clarity, it meets for the most part, these
standards. With regard to the first element, the complaint refers to the plaintiffs
copyright interest in the "Subject Work," and as the defendants point out makes
several different references to what [7] exactly this work constitutes (See Am. Compl.
28, 76, 78.)[4] However, piecing together these various allegations, and drawing all
reasonable inferences in the plaintiff's favor, it becomes clear for purposes of this motion
that the "Subject Work" consists of the illuminated underwater footage that was filmed
utilizing the large light towers that Lindsay helped design and construct. (See Am.
Compl. 46.) Regarding the second and third elements, the plaintiff alleges that he owns
these works, (Am. Compl. 55), and that they were accepted and registered with the
U.S. Register of Copyrights. (Am. Compl. 78.)
26
As to the fourth element how and when the defendants infringed the copyright the
plaintiff has satisfied his burden as to all the defendants except SCI. With respect to
RMST, the complaint alleges that RMST "unlawfully enter[ed] into the exclusive license
agreement with DCI," (Am. Compl. 62), "enered [sic] into contracts conveying video
clips and still images . . . to various Titanic artifacts exhibitions throughout the world,"
and "RMST displays images from the Subject Work on its INTERNET web site." (Am.
Compl. 63.) The complaint alleges that DCI incorporated portions of the illuminated
footage into three separate documentaries that aired on certain dates in 1997. (Am.
Compl. 64.)
27
The plaintiffs' contentions against SCI, however, do not fare as well. Lindsay alleges that
SCI "used plaintiff's name and likeness" to promote a 1996 cruise expedition to observe
the salvage operations. (Am. Compl. 42.) In addition, the amended complaint charges
that "SCI did knowingly and willfully infringe upon Plaintiff's copyright . . . by unlawfully
purchasing and/or otherwise obtaining copies of the Subject Work" and has and will
"exploit and profit from the Subject Work." [8] (Am. Compl. 73.) I find that these vague
and conclusory allegations are, as a matter of law, insufficient withstand the instant
motion. Kelly, 145 F.R.D. at 36, n.3 ("Rule 8 requires that the particular infringing acts be
set out with some specificity. Broad, sweeping allegations of infringement do not comply
with Rule 8."). Accordingly, the plaintiffs third cause of action as against SCI is hereby
dismissed.
28
2. Authorship
29
The defendants first argue that the plaintiff cannot have any protectable right in the
illuminated footage since he did not dive to the ship and thus did not himself actually
photograph the wreckage. This argument, however, does not hold water.
30
The Copyright Act of 1976 provides that copyright ownership "vests initially in the author
or authors of the work." 17 U.S.C. 201(a). Generally speaking, the author of a work is
the person "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, 490 U.S. 730, 737 (1989) (citing 17 U.S.C. 102). In the context of
film footage and photography, it makes intuitive sense that the "author" of a work is the
individual or individuals who took the pictures, i.e. the photographer. However, the
concept is broader than as argued by the defendants.
31
For over 100 years, the Supreme Court has recognized that photographs may receive
copyright protection in ''so far as they are representatives of original intellectual
conceptions of the author" Burrow-Giles Lithographic Co. v. Sarony, 111 U.S . 53, 58
(1884). An individual claiming to be an author for copyright purposes must show "the
existence of those facts of originality, of intellectual production, of thought, and
conception." Feist Publications. Inc. v. Rural Telephone Service Company Inc., 499 U.S.
340, 346-347 (1991) (citing Burrow-Giles, 111 U.S. at 59-60). [9] Some elements of
originality in a photograph includes "posing the subjects, lighting, angle, selection of film
and camera, evoking the desired expression, and almost any variant involved." Rogers v.
Koons, 960 F.2d 301, 307 (2d Cir.), cert. denied, 506 U.S. 934 (1992). Taken as true, the
plaintiffs allegations meet this standard. Lindsay's alleged storyboards and the specific
directions he provided to the film crew regarding the use of the lightowers and the
angles from which to shoot the wreck all indicate that the final footage would indeed be
the product of Lindsay's "original intellectual conceptions."
32
The fact that Lindsay did not literally perform the filming, i.e. by diving to the wreck and
operating the cameras, will not defeat his claims of having "authored" the illuminated
footage. The plaintiff alleges that as part of his pre-production efforts, he created so-
called "storyboards," a series of drawings which incorporated images of the Titanic by
identifying specific camera angles and shooting sequences. (Am. Compl. 38.) During
the expedition itself, Lindsay claims to have been "the director, producer and
cinematographer" of the underwater footage. (Am. Compl. 46.) As part of this role,
Lindsay alleges that he directed daily planning sessions with the film crew to provide
them with "detailed instructions for positioning and utilizing the light towers." (Am.
Compl. 47.) Moreover, the plaintiff actually "directed the filming" of the Titanic from on
board the Ocean Voyager, the salvage vessel that held the crew and equipment. (Am.
Compl. 47) Finally, Lindsay screened the footage at the end of each day to "confirm
that he had obtained the images he wanted." (Am. Compl. 48.)
33
All else being equal, where a plaintiff alleges that he exercised such a high degree of
control over a film operation including the type and amount of lighting used, the
specific camera angles to be employed, and other detail-intensive artistic elements of a
film such that the final product [10] duplicates his conceptions and visions of what the
film should look like, the plaintiff may be said "author" within the meaning of the
Copyright Act.
34
Indeed, the instant case is analogous to Andrien v. Southern Ocean County Chamber of
Commerce, 927 F.2d 132 (3d Cir. 1991). There, the Third Circuit recognized that "a party
can be considered an author when his or her expression of an idea is transposed by
mechanical or rote transcription into tangible form under the authority of the
party." Id. at 135. The plaintiff in Andrien had received a copyright for a map of Long
Beach Island, New Jersey which was created from a compilation of pre-existing maps and
the plaintiffs personal survey of the island. To transform his concepts and the information
he had gathered into the final map, the plaintiff hired a printing company to print the
map in final form. The plaintiff testified that the maps were made by the printer "with me
at her elbow practically" and that he spent time each day at the print shop during the
weeks the map was made, directing the map's preparation in specific detail. In reversing
the lower court's granting of summary judgment against the plaintiff, the court noted
that the printers had not "intellectually modified or technically enhanced the concept
articulated by Andrien," nor did they "change the substance of Andrien's original
expression." Id. at 135. See also Lakedreams v. Taylor 932 F.2d 1103, 1108 (5th Cir.
1991) (noting that authors may be entitled to copyright protection even if they do not
''perform with their own hands the mechanical tasks of putting the material into the form
distributed to the public"). It is too early to tell whether the allegations of the plaintiff
here satisfy the copyright laws, but crediting his story as I must, dismissal is unwarranted
at this stage of the litigation.
35
The defendants argue that Geshwind v. Garrick, 734 F.Supp. 644 (S.D.N.Y. 1990), vacated
in part, 738 F.Supp. 792 (S.D.N.Y. 1990), affd, 927 F.2d 594 (2d Cir.), cert. denied, 502
U.S. 811-[11]-1991), mandates dismissal. That case, however, is inapposite. The plaintiff
there, a producer of computer graphics animation and special effects, had contracted to
produce a 15-second animation piece. The plaintiff hired Digital, a computer graphics
company to, in essence, produce the animated piece. The court in Geshwind found that
Digital, by its employee, was the "author" within the meaning of the Copyright Act. In
ruling that the plaintiff was not an "author," Judge Patterson found that the plaintiff there
had made only minimal contributions to the final product and had only some, if any, of
his "suggestions" incorporated into the final product. Id. at 650. This is in stark contrast
to the case at bar where Lindsay alleges that his contributions not suggestions were
anything but minimal, and he describes himself as the driving force behind the final film
product at issue here.
36
3. Joint-Authorship
37
In the alternative, the defendants argue that Lindsay is, at best, a joint author of the
underwater footage with RMST. This contention is based on the notion that Christian
Petron, the main photographer of the film, was at least a joint-author of the footage with
the plaintiff. Since Petron's participation was accomplished under the auspices of a work
for hire agreement with RMST, the defendants' argument continues, any rights to
authorship Petron may have received via his filming were conferred upon RMST. As a
joint author with the plaintiff then, RMST cannot be liable for copyright infringement
since each co-author acquires an undivided interest in the entire work and has the right
to use the work as he or she pleases. Thomson v. Larson, 147 F .3d 195; 199 (2d Cir.
1998); Weissman v. Freeman, 868 F.2d 1313, 1318 (2d Cir.) ("[A]n action for infringement
between joint owners will not lie because an individual cannot infringe his own
copyright."), cert. denied, 493 U.S. 883 (1989). Similarly, any copyright claim against DCI
would fail since RMST, as a joint author, has the right to license the joint work to third
parties. Thomson, 147 F.3d at 199.
38
[12] A "joint work" under the Copyright Act is one "prepared by two or more authors with
the Intention that their contributions be merged into inseparable or interdependent parts
of a unitary whole." 17 U.S.C. 101. To prove co-authorship status, it must be shown by
the individual claiming co-authorship status that each of the putative co-authors (1) fully
intended to be co-authors, and (2) made independently copyrightable contributions to
the work. Thomson, 147 F.3d at 200 (citing Childress v. Taylor, 945 F.2d 500, 507-508 (2d
Cir. 1991)).
39
Drawing all inferences in favor of Lindsay, I conclude that no such status existed in the
case at bar. With regard to the intent prong of the analysis, "[a]n important indicator of
authorship is a contributor's decision making authority over what changes are made and
what is included in a work." Id. at 202-3 (citing Erickson v. Trinity Theatre. Inc., 13 F.3d
1061, 1071-72 (7th Cir. 1994) (actor's suggestions of text did not support a claim of co-
authorship where the sole author determined whether and where such suggestions were
included in the work)). In other words, where one contributor retains a so-called "veto"
authority over what is included in a work, such control is a strong indicator that he or she
does not intend to be co-authors with the other contributor. According to the pleadings,
the plaintiff exercised virtually total control over the content of the film as "the director,
producer and cinematographer" of the production. (Am. Compl. 46.) Additionally, he
briefed the photographers with regards to, inter alia, the specific camera angles they
were to employ, (Am. Compl. 47), and Lindsay screened the film each day to make
sure the proper footage was obtained. (Am. Compl. 48.) Based on these allegations,
and implicit in the notion that the film crew was simply "following directions,"[5]Lindsay
retained what appeared to be exclusive authority [13] over what was included in the
footage. Assuming as I must at this stage of the litigation that this is true, it can hardly
be said that the plaintiff intended Petron or any other contributor to be a coauthor.
Accordingly, the claims by RMST that it by virtue of Petron's role as a photographer
under a work-for-hire agreement was a joint-author within the meaning of the
Copyright Act must fail.
40
4. Accounting
41
Lindsay's fifth cause of action seeks an accounting by DCI, SCI, and RMST of moneys
these defendants received from their unauthorized use of the copyrighted footage at
issue. Regardless of whether this Court or a jury ultimately finds that Lindsay and
RMST are joint authors, with respect to DCI, the plaintiffs complaint here sinks under its
own weight.
42
The duty to provide an accounting from profits obtained runs only between co-owners of
a copyright. Margo v. Weiss, No. 96 Civ. 3842, 1998 WL 2558, at *9 (S.D.N.Y. Jan. 5, 1998)
("[T]he duty to account for profits presupposes a relationship as co-owners of the
copyright. . . ."); cf. Thomson, 147 F.3d at 199 ("[E]ach joint author has the right to use or
to license the work as he or she wishes, subject only to the obligation to account to the
other joint owner for any profits that are made.") (emphasis added); Kaplan v.
Vincent, 937 F.Supp. 307, 316 (S.D.N.Y. 1996) ("[E]ach author maintains the right to use
or license the work, subject only to an accounting to the other co-owner.") (emphasis
added). Because DCI is only a licensee of a putative joint owner of the copyright at issue
here, Lindsay's claim for an accounting fails as a matter of law and must be [14]
dismissed.[6]
43
III. CONCLUSION
44
For the reasons discussed above, the defendants' motions are DENIED in part and
GRANTED in part such that the plaintiffs cause of action for copyright infringement
against SCI is dismissed, as is Lindsay's cause of action for an accounting with respect to
DCI and SCI only. The plaintiffs remaining copyright-based claims[7] and other causes of
action have survived this motion.[8] The current pre-trial scheduling order remains in
place, and the case is on the January 2000 trailing trial calendar.
 ERICKSON v. TRINITY THEATRE, INC., 13 F.3d
1061 (7th Cir. 1994)
Before RONEY,[n*] COFFEY, and RIPPLE, Circuit Judges.

RIPPLE, Circuit Judge.

[1] The plaintiff Karen Erickson brought this action seeking a preliminary and permanent
injunction to prevent the defendant Trinity Theatre d/b/a Trinity Square Ensemble ("Trinity") from
performing three plays and using two videotapes to which she owned the copyrights. The
magistrate judge recommended enjoining the performance of the plays but not the use of the
videotapes. Both parties filed objections. The district court sustained Ms. Erickson's objections to
the portions of the recommendation addressing the videotapes but denied Trinity's objections to the
portion of the recommendation addressing performance of the plays. Accordingly, the district court
enjoined Trinity from using either the plays or the videotapes. Trinity now appeals. We now affirm.

[2] BACKGROUND

[3] A. Facts[n1]

[4] Ms. Erickson was one of the founders of a theatre company in Evanston, Illinois, that ultimately
became known as Trinity Theatre. Between 1981 and January 1991, Ms. Erickson served Trinity in
various capacities: as playwright, artistic director, actress, play director, business manager, and
member of the board of directors. This suit revolves around Ms. Erickson's role as playwright.

[5] At issue here are the rights to three plays: Much Ado About Shakespeare ("Much Ado"); The
Theatre Time Machine ("Time Machine"); and Prairie Voices: Tales from Illinois ("Prairie
Voices"). Much Ado is a compilation of scenes and sonnets from William Shakespeare and other
writers of his time. Ms. Erickson revised this work from an earlier script entitled Sounds and Sweet
Aires. Michael Osborne, a Trinity actor, testified that Ms. Erickson compiled Much Ado in 1988 and
that many decisions about what was to be included were made during rehearsals. Osborne
identified two portions of the copyrighted script that resulted from his suggestions: a passage
to Macbeth and the introduction to the play. The editing of the text, Osborne continued, was
accomplished largely by consensus; however, when a consensus could not be had, Ms. Erickson
made the final decisions. Osborne further testified that he understood at the time that the play was
being created for Trinity and not for Ms. Erickson. Ms. Erickson does not dispute the process
described by Osborne, but characterizes it differently. She perceived the process only as actors
making suggestions for her script.

[6] Time Machine is a play of five scenes based on a public domain Native American folk tale.
Each scene depicts dramatic styles from different historical periods. Ms. Erickson received a
copyright registration for Time Machine on September 12, 1988. She described the development of
the play as beginning in 1977 when she was in school. At that time, she wrote the Greek-style
drama scene. Later, while teaching high school drama, she wrote the second scene based
on commedia dell'arte. She also began work on the melodrama and improvisational scenes of the
play at that time. Ms. Erickson started producing the play independently of Trinity in 1984 with two
other actors, Paddy Lynn and Will Clinger. Ms. Erickson claimed that she worked to develop the
scenes alone; however, the evidence shows that the actors were involved in the development of the
melodrama and improvisational scenes. The improvisational process, as described by Ms. Lynn, is a
form of theatre in which there is no script. Rather, actors work with an idea and a loose structure to
create a play. Ms. Lynn described the development of the improvisational scene in Time Machine as
a collaborative effort. However, she conceded that Ms. Erickson took all of the notes from
rehearsals and compiled them into the script; furthermore, nothing was included in the script
without Ms. Erickson's approval. Initially, Ms. Erickson attributed the script to both herself and to
Ms. Lynn. Ms. Lynn also received royalties for performances of the play. Ms. Erickson denied that
she ever intended to include Ms. Lynn as joint author. She conceded that Ms. Lynn was credited on
publicity materials as an author but denied that she approved such credit. The later change in
attribution, Ms. Erickson claims, merely corrected the initial error.

[7] In 1990, Ms. Erickson developed Prairie Voices, a play based on tales from Illinois history. She
had the idea to develop the play as a Trinity production. Her original intent was to launch a
collaborative effort in which each of the actors would contribute a story to the play. However, none
of the actors initiated writing a script and the play, as it resulted, was based entirely on tales
provided by Ms. Erickson. As with Time Machine, Ms. Erickson worked with the actors in the
improvisational format. Although testifying that she alone wrote the play, Ms. Erickson admitted
that the actors provided ideas for the dialogue. Another actor, Ruth Ann Weyna, testified that the
writing of the play was a creative process involving a number of actors. However, she conceded
that Ms. Erickson controlled what eventually was put in the script.

[8] In 1987, Trinity began paying Ms. Erickson royalties for its performances of her plays. On July
5, 1988, Ms. Erickson entered into a two-year licensing agreement with Trinity that designated her
as a "playwright" entitling her to royalties for performances of two of her plays, Much
Ado and Time Machine. Trinity stipulated that it also paid Erickson royalties for its performances
of Prairie Voices, although that play was not expressly covered by the licensing agreement. Trinity
continued to pay Ms. Erickson royalties after the expiration of the licensing agreement. Trinity
discontinued making royalty payments on November 15, 1990.

[9] Ms. Erickson was also subject to an actors' agreement with Trinity. In July 1988, Ms. Erickson
signed the agreement which stated: "The actor expressly agrees that Trinity reserves the rights to
any recording, audio, video or both of the Production. . . ." The contract covered the tour which was
forecast to run through June 30, 1989.

[10] Ms. Erickson left Trinity Theatre in January 1991. Shortly thereafter, she applied for and was
issued copyright registration for Much Ado and Prairie Voices. Concurrently, she received
registration for the video productions of Time Machine, taped in October 1989, and Prairie
Voices, taped in November 1990. She had previously obtained a copyright certificate for Time
Machine on September 12, 1988. On January 21, 1991, Ms. Erickson's attorneys wrote Trinity a
letter demanding that the theatre discontinue performing the plaintiff's plays. Trinity refused to
comply with the request.

[11] On April 3, 1991, Ms. Erickson filed a seventeen-count complaint against Trinity Theatre,
members of Trinity's management, and individual Trinity actors seeking injunctive and legal relief
in which she alleged copyright infringement, unfair competition, and other related tortious activity.
In October 1992, Ms. Erickson filed a motion for a preliminary injunction to prevent the defendant
from producing or performing five plays for which Ms. Erickson claimed exclusive copyright
ownership, from displaying videotapes, photographs, and brochures regarding these plays, and
from reproducing any materials from a copyrighted work entitled "Drama/Learning Process." After
a partial settlement agreement, the parties stipulated that the district court did not need to resolve
the plaintiff's request for injunctive relief as to two of the five plays. As a result, the only plays at
issue for purposes of the plaintiff's motion for preliminary injunction were Time Machine, Much
Ado, and Prairie Voices, as well as videotapes of Time Machine and Prairie Voices.

[12] B. Prior Proceedings

1.

[13] The magistrate judge reviewed the elements necessary to issue a preliminary injunction but
focused her analysis, by agreement of the parties, on the likelihood of success on the merits.

[14] The magistrate judge briefly reviewed the elements of copyright infringement. Because a valid
copyright registration had been made within the requisite time, the burden would be on Trinity to
show the invalidity of the registration. See Rand McNally & Co. v. Fleet Management Sys. Inc., 591
F.Supp. 726, 737 (N.D.Ill. 1983). It could either demonstrate that the material was copied from
another source or dispute the authorship of the material itself. In this case, continued the magistrate
judge, Trinity challenged the authorship itself. Trinity claimed that several of its members were
joint authors of the three plays with Ms. Erickson, that these joint authors gave Trinity the right to
produce the plays, and therefore that Trinity and its member joint authors share rights to the plays
and videotapes.

[15] The magistrate judge was faced with an issue of first impression in this circuit: establishing the
appropriate test for determining whether a work has been prepared as a "joint work" within the
meaning of 101 of the Copyright Act of 1976, 17 U.S.C. 101 (1988).[n2] The parties suggested
different approaches. Trinity maintained that the standard for determining a joint work is
"collaboration alone"; because there was collaboration between Ms. Erickson and its members, its
members jointly authored the three plays at issue and share rights to their use and production. Ms.
Erickson contended that the appropriate test for a joint work is the "copyrightable subject matter"
test. Under the test suggested by Ms. Erickson, none of the plays were joint works because only she
was an author; the other actors had not contributed independently copyrightable subject matter.

[16] The magistrate judge's report and recommendation concluded that the district court should
enter a preliminary injunction in favor of Ms. Erickson concerning the plays. The magistrate judge
stated that "[a] determination as to joint authorship involves an examination of the putative authors'
intent at the time the work is produced." Report and Recommendation at 17. The magistrate judge
followed primarily the Second Circuit's test in Childress v. Taylor, 945 F.2d 500, 505-06 (2d Cir.
1991), which identified two elements of joint ownership: (1) the contribution of each joint author
must be copyrightable and (2) the parties must have intended to be joint authors. With regard to the
second element, the Childress court stated that the putative joint authors must entertain in their
minds "the concept of joint authorship." Id. at 508. Using this analysis, the magistrate judge
determined that Ms. Erickson was likely to prevail on her claims regarding the three plays. With
regard to Prairie Voices, the evidence was clear that Ms. Erickson controlled the script and that the
contributions of the actors were not copyrightable. Even if it was not necessary to show that a
contribution was independently copyrightable in order to establish joint ownership, the actors'
inability to specify any particular contribution was strong evidence that they were not authors of the
play. Furthermore, Ms. Erickson never intended to share authorship with any of the actors.

[17] The magistrate judge found similarly with respect to Much Ado. However, the magistrate judge
termed the decision with respect to Time Machine "more problematic." She continued:

The intent portion of plaintiff's proof requires resolution of the credibility of Erickson as contrasted
with Paddy Lynn in their respective testimony. . . . I conclude that Paddy Lynn is more credible
than Karen Erickson on this issue. In light of Erickson's pivotal role and her apparent control over a
very small organization, I find it unlikely that she would have permitted the publicity material . . .
to be published crediting Lynn as author if she did not acknowledge her as author.

[18] Report and Recommendation at 25. The magistrate judge then stated that the decision probably
turns on whether or not the contribution must be copyrightable. The magistrate judge concluded,
however, that even in this respect, Ms. Erickson had met the threshold of a "better than negligible"
chance of succeeding on the merits. Roland Mach. Co. v. Dresser Indus., Inc., 749 F.2d 380, 387
(7th Cir. 1984). The magistrate judge therefore balanced the harms and the public interest, and she
determined that the strong public policy interest in protecting copyrights favored issuance of a
preliminary injunction here. See Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240,
1255 (3d Cir. 1983) ("[I]t is virtually axiomatic that the public interest can only be served by
upholding copyright protections. . . ."), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d
158 (1984).

[19] The magistrate judge also addressed the claims as to the videotapes. Here, she stated, Ms.
Erickson had not shown that she was likely to succeed on the merits of her claim of copyright
infringement. Specifically, the magistrate judge decided that Ms. Erickson had released her rights to
the use of those in the actors' agreement.

2.

[20] Both parties filed objections to the magistrate judge's recommendation. Trinity objected to the
criteria for preliminary injunctions used by the magistrate judge. It also objected to the criteria for
joint authorship applied by the magistrate judge when analyzing the parties' competing arguments
as to Trinity's entitlement to joint author status. Ms. Erickson objected to the characterization of her
claim concerning Time Machine as "more problematic." She also objected to the magistrate judge's
recommendation regarding the videotape claims.
[21] The district court found that Trinity had waived its argument concerning the standard for
preliminary injunctions because the parties had agreed that the likelihood of success issue would
determine the outcome of the hearing. However, continued the court, assuming that there was no
waiver, the magistrate judge had not limited her analysis to this element. Instead, she had
recognized that the "better than negligible" standard was an initial threshold Ms. Erickson must
meet. After this hurdle was met, the magistrate judge proceeded with the remaining preliminary
injunction analysis. Consequently, the district court concluded, there was no error.

[22] The district court then turned to the question of joint ownership. The court examined the two
competing tests: (1) the Childress standard, which requires both copyrightability and intent to be
joint authors, and (2) the "collaboration test." "The major difference between the approach[es] is
that the latter does not require each of the putative joint authors' contributions to be independently
copyrightable." Opinion at 10. Noting that the Seventh Circuit had yet to choose between the
approaches, the district court did not choose between the two alternatives. It noted instead that
under either standard, the plaintiff was likely to prevail on the merits. Specifically, even if the
"collaboration alone" test were the correct standard, there would need to be a "de minimis
collaboration." Because the actors' contributions were less than de minimis, Trinity could not
prevail. The district court went on to overrule Ms. Erickson's objections concerning the
characterization of her claims regarding Time Machine.

[23] Finally, the district court addressed the issue of the videotapes. The district court sustained Ms.
Erickson's objections to the magistrate judge's finding that she was not likely to succeed on these
claims. Specifically, the district court found that the actors' agreement, upon which the magistrate
judge relied heavily, had expired before the video-tapes in issue had been taped. Consequently, they
were not covered by the agreement.

[24] Trinity alleges two errors of law in the district court's analysis. First, Trinity maintains that the
district court erred in failing to recognize collaboration as an alternate basis for establishing joint
authorship.[n3] Second, it argues that the district court applied the wrong legal standard in
determining whether Ms. Erickson was likely to succeed on the merits. We address each of these
arguments in turn.

II

[25] ANALYSIS

[26] A. Standard of Review

[27] "This Court gives substantial deference to a district court's decision to grant a preliminary
injunction insofar as that decision involves the discretionary acts of weighing evidence or balancing
equitable factors." United States v. Baxter Healthcare Corp., 901 F.2d 1401, 1407 (7th Cir. 1990).
However, "the more purely legal conclusions made by a district court in granting a preliminary
injunction are subject to de novo review." Id.

[28] Generally four factors are relevant in determining whether to grant or deny a preliminary
injunction. A district court typically considers whether the moving party has demonstrated (1) some
likelihood of prevailing on the merits, and (2) an inadequate remedy at law and irreparable harm if
preliminary relief is denied. Abbott Lab. v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir.
1992); Lawson Prods., Inc. v. Avnet, Inc., 782 F.2d 1429, 1433 (7th Cir. 1986); Roland Mach. Co. v.
Dresser Indus., Inc., 749 F.2d 380, 386-87 (7th Cir. 1984). If the movant clears these two
thresholds, the court must consider (3) the irreparable harm the nonmovant will suffer if
preliminary relief is granted, balanced against the irreparable harm to the movant if relief is denied;
and (4) the public interest, meaning the effect that granting or denying the injunction will have on
nonparties. Abbott Lab., 971 F.2d at 12; Lawson Prods., 782 F.2d at 1433; Roland Mach., 749 F.2d
at 387-88.

[29] The central issue in this appeal is whether Ms. Erickson is likely to succeed on the merits of
her case. Whether Ms. Erickson will succeed depends greatly on whether Trinity can establish that
the works at issue were joint works within the meaning of the Copyright Act of 1976. Statutory
interpretation is a question of law and therefore we review the district court's determination of this
issue de novo. See, e.g., United States v. Shriver, 989 F.2d 898, 901 (7th Cir. 1992) ("[T]he court of
appeals must review the district court's interpretation of the applicable statute de novo.").

[30] B. Joint Work

[31] We now turn to the issue of whether any of the material in question is a "joint work." In a joint
work, the joint authors hold undivided interests in a work, despite any differences in each author's
contribution. 17 U.S.C. 201. Each author as co-owner has the right to use or to license the use of
the work, subject to an accounting to the other co-owners for any profits. Childress v. Taylor, 945
F.2d 500, 505 (2d Cir. 1991); Weinstein v. University of Illinois, 811 F.2d 1091, 1095 (7th Cir.
1987); 1 Nimmer on Copyright, 6.02, at 6-7 to 6-8. Thus, even a person whose contribution is
relatively minor, if accorded joint authorship status, enjoys a significant benefit. See Community for
Creative Non-Violence v. Reid, 846 F.2d 1485, 1498 (D.C.Cir. 1988), aff'd on other grounds, 490
U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989); Nimmer, 6.08, at 6-24.

[32] In determining whether any of the works at issue in this case may be classified as a "joint
work," our starting point must be the language of the statute. Section 101 of the Copyright Act
defines a "joint work" as

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.

[33] 17 U.S.C. 101.

1.

[34] Neither the Act nor its legislative history defines "inseparable" or "interdependent." The
legislative history states that examples of inseparable parts are the joint contributions of two
authors to a single novel or the contributions of two painters to a single work; an example of
interdependent parts are the lyrics and music for a song. [n4]Apart from these examples, the reports
do little to clarify the criteria for determining joint authorship. Indeed, they increase the ambiguity.
The committee reports state:
[A] work is "joint" if the authors collaborated with each other, or if each of the authors prepared his
or her contribution with the knowledge and intention that it would be merged with the contributions
of other authors as "inseparable or interdependent parts of a unitary whole." The touchstone here
is the intention, at the time the writing is done, that the parts be absorbed or combined into an
integrated unit. . . .

[35] House Report at 120; Senate Report at 103, U.S.Code Cong. & Admin.News 1976, pp. 5736
(emphasis added). The statute clearly requires a focus on the intention to collaborate. However, the
disjunctive first sentence in the legislative reports, set out directly above, seemingly contradicts that
statutory language by focusing on collaboration and not mentioning intent to create a joint work.

[36] This ambiguity presents analytical problems in cases such as this one, in which the parties
have collaborated in some sense but dispute whether there was a mutual intent to create a joint
work. In resolving this ambiguity, we believe that it is important to note, at the outset, that the
statute itself requires that there be an intent to create a joint work. Therefore, reliance on
collaboration alone, as Trinity suggests, would be incompatible with the clear statutory mandate.
On this point, we find ourselves in agreement with the analysis of Judge Newman writing for the
Second Circuit in Childress. He pointed out that a disjunctive standard based solely on the
legislative history would not square with the plain meaning of the statute:

This passage appears to state two alternative criteria - one focusing on the act of collaboration and
the other on the parties' intent. However, it is hard to imagine activity that would constitute
meaningful "collaboration" unaccompanied by the requisite intent on the part of both participants
that their contributions be merged into a unitary whole, and the case law has read the statutory
language literally so that the intent requirement applies to all works of joint authorship.

[37] Childress, 945 F.2d at 505-06. Like the Second Circuit in Childress, we believe that the
statutory language clearly requires that each author intend that their respective contributions be
merged into a unitary whole. Focusing solely upon the fact of contemporaneous input by several
parties does not satisfy the statutory requirement that the parties intend to merge their contributions
into a unified work. In addition, the "collaboration alone" standard would frustrate the goal of the
Act "[t]o promote the Progress of Science and the useful Arts." U.S. CONST. art. I, 8, cl. 8.
Seldom would an author subject his work to pre-registration peer review if this were the applicable
test. Those seeking copyrights would not seek further refinement that colleagues may offer if they
risked losing their sole authorship. Thus, we cannot accept Trinity's proposed "collaboration alone"
test as compatible with the language and purpose of the Act.

2.

[38] Even if two or more persons collaborate with the intent to create a unitary work, the product
will be considered a "joint work" only if the collaborators can be considered "authors." Courts have
applied two tests to evaluate the contributions of authors claiming joint authorship status: Professor
Nimmer's de minimis test and Professor Goldstein's copyrightable subject matter
("copyrightability") test. The de minimis and copyrightability tests differ in one fundamental
respect. The de minimis test requires that only the combined product of joint efforts must be
copyrightable. By contrast, Professor Goldstein's copyrightability test requires that each author's
contribution be copyrightable. We evaluate each of these tests in turn.

[39] In undertaking this task, we focus on how well the test promotes the primary objective of the
Act. This objective is not to reward an author for her labors, but "[t]o promote the Progress of
Science and useful Arts." U.S. CONST. art. I, 8, cl. 8; see also Feist Publications, Inc. v. Rural
Tel. Serv. Co., Inc., 499 U.S. 340, 350, 111 S.Ct. 1282, 1290, 113 L.Ed.2d 358 (1991). This
objective is accomplished by "assur[ing] authors the right to their original expression," but also by
"encourag[ing] others to build freely upon the ideas and information conveyed by a work." Feist
Publications, 499 U.S. at 349-50, 111 S.Ct. at 1290 (citing Harper & Row, Publishers, Inc. v.
Nation Enters., 471 U.S. 539, 556-57, 105 S.Ct. 2218, 2228-29, 85 L.Ed.2d 588 (1984)). It is in
light of this goal that 102(b) exempts ideas from protection under the Copyright Act. [n5]

[40] In addition to promoting the Act's primary objective, we must consider how well the test will
further goals of administrative and judicial efficiency. [n6] In this inquiry, we must adopt a standard
that is sufficiently clear to enable parties to predict whether their contributions to a work will
receive copyright protection. A standard satisfying these aims will allow contributors to avoid post-
contribution disputes concerning authorship, and to protect themselves by contract if it appears that
they would not enjoy protections of the Act itself.

[41] a. Professor Nimmer's de minimis standard

[42] Professor Nimmer, the late scholar on copyright, took the position that all that should be
required to achieve joint author status is more than a de minimis contribution by each author. "De
minimis" requires that "more than a word or line must be added by one who claims to be a joint
author." Nimmer 6.07, at 6-21. Professor Nimmer distinguishes his de minimis standard from the
standard for copyrightability. Id. As an example, Professor Nimmer asserts that if two authors
collaborate, with one contributing only uncopyrightable plot ideas and another incorporating those
ideas into a completed literary expression, the two authors should be regarded as joint authors of
the resulting work. Id.

[43] This position has not found support in the courts. [n7] The lack of support in all likelihood stems
from one of several weaknesses in Professor Nimmer's approach. First, Professor Nimmer's test is
not consistent with one of the Act's premises: ideas and concepts standing alone should not receive
protection. Because the creative process necessarily involves the development of existing concepts
into new forms, any restriction on the free exchange of ideas stifles creativity to some extent.
Restrictions on an author's use of existing ideas in a work, such as the threat that accepting
suggestions from another party might jeopardize the author's sole entitlement to a copyright, would
hinder creativity. Second, contribution of an idea is an exceedingly ambiguous concept. Professor
Nimmer provides little guidance to courts or parties regarding when a contribution rises to the level
of joint authorship except to state that the contribution must be "more than a word or a
line." Nimmer, 6.07, at 6-20.

[44] Professor Nimmer's approach is of little pragmatic use in resolving actual cases. Rarely will
minor contributors have the presumption to claim authorship status. In such easy cases, the parties'
intent as to authorship status likely will be apparent without resort to any formal test evaluating the
parties' respective contributions to discern intent. In the more complex situations, such as the case
before us, in which the improvisational process undoubtedly yielded valuable insights to the
primary author, the test gives no guidance on how we are to assess the respective contributions of
the parties to distinguish the author from the critic or advisor. For these reasons, we, as the majority
of the other courts, cannot accept Professor Nimmer's test as an adequate judicial tool to ascertain
joint authorship.

[45] b. Professor Goldstein's copyrightability test

[46] The copyrightable subject matter test was formulated by Professor Paul Goldstein and has
been adopted, in some form, by a majority of courts that have considered the issue. [n8] According to
Professor Goldstein, "[a] collaborative contribution will not produce a joint work, and a contributor
will not obtain a co-ownership interest, unless the contribution represents original expression that
could stand on its own as the subject matter of copyright." Paul Goldstein, Copyright: Principles,
Law, and Practice 4.2.1.2, at 379 (1989). Furthermore, the parties must have intended to be joint
authors at the time the work was created. Id. Professor Goldstein and the courts adopting his test
justify this position by noting that 101's and 302(b)'s use of the word "authors"[n9] suggests
that each collaborator's contribution must be a copyrightable "work of authorship" within the
meaning of 102(a).

[47] We agree that the language of the Act supports the adoption of a copyrightability requirement.
Section 101 of the Act defines a "joint work" as a "work prepared by two or more authors"
(emphasis added). To qualify as an author, one must supply more than mere direction or ideas. An
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, 490 U.S. 730, 737, 109 S.Ct. 2166, 2171, 104 L.Ed.2d 811 (1989). As to the requirement of
fixation, 101 states:

A work is "fixed" in a tangible medium of expression when its embodiment in a copy or

phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it
to be perceived, reproduced, or otherwise communicated for a period of more than transitory
duration.

[48] 17 U.S.C. 101.

[49] The copyrightable subject matter test does not suffer from the same infirmities as Professor
Nimmer's de minimis test. The copyrightability test advances creativity in science and art by
allowing for the unhindered exchange of ideas, and protects authorship rights in a consistent and
predictable manner. It excludes contributions such as ideas which are not protected under the
Copyright Act. 17 U.S.C. 102(b) ("In no case does copyright protection for an original work of
authorship extend to any idea . . . embodied in such work."); see also Feist Publications v. Rural
Tel. Serv. Co., 499 U.S. 340, 344-45, 111 S.Ct. 1282, 1287, 113 L.Ed.2d 358 (1991) (stating that the
"most fundamental axiom of copyright law is that `[n]o author may copyright his ideas or the facts
he narrates'"); Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556, 105 S.Ct.
2218, 2228, 85 L.Ed.2d 588 (1985) (discussing idea/expression dichotomy). This test also enables
parties to predict whether their contributions to a work will entitle them to copyright protection as a
joint author. Compared to the uncertain exercise of divining whether a contribution is more than de
minimis, reliance on the copyrightability of an author's proposed contribution yields relatively
certain answers. See 17 U.S.C. 101; Feist Publications, 499 U.S. at 344-50, 111 S.Ct. at 1287-
90. The copyrightability standard allows contributors to avoid post-contribution disputes
concerning authorship, and to protect themselves by contract if it appears that they would not enjoy
the benefits accorded to authors of joint works under the Act.

[50] We agree with the Childress court's observation that the copyrightability test "strikes an
appropriate balance in the domains of both copyright and contract law." 945 F.2d at 507. Section
201(b) of the Act allows any person to contract with another to create a work and endow the
employer with authorship status under the Act. 17 U.S.C. 201(b). A contributor of
uncopyrightable ideas may also protect her rights to compensation under the Act by contract.
Section 201(d) of the Act provides in part that any of the exclusive ownership rights comprised in a
copyright may be transferred from the person who satisfied the requirements for obtaining the
copyright to one who contracts for such rights. 17 U.S.C. 201(d). Thus, anyone who contributes
to the creation of a work, either as patron, employer, or contributor of ideas, has the opportunity to
share in the profits produced by the work through an appropriate contractual arrangement.

[51] C. Application

[52] We now address Trinity's claims of joint authorship under the copyrightability test. As stated
above, Trinity must clear two hurdles in order to establish that the plays at issue are joint works.
First, it must show the parties intended to be joint authors at the time the work was created. Second,
Trinity must show that its contributions to the works were independently copyrightable.

[53] It is clear that, with regard to at least two works, Much Ado and Prairie Voices, Trinity cannot
clear the first hurdle. Much Ado is based on a work that Ms. Erickson had largely completed before
Trinity actors improvised based on Ms. Erickson's creation. The fact that one actor, Michael
Osborne, suggested that Ms. Erickson include a passage from Macbeth and an introduction to the
play does not make him a joint author. He conceded that whether his contributions were included
and where they went into the compilation were entirely Ms. Erickson's decisions. Furthermore,
neither Ms. Erickson nor Trinity considered any of the actors to be co-authors with her in Much
Ado, as is evidenced by the licensing agreement. Similarly with Prairie Voices, Ms. Erickson
provided the stories on which the play was based, and she decided which of the actors' suggestions
were incorporated into the script. The actors did not consider themselves to be joint authors with
Ms. Erickson, and there is no evidence that Ms. Erickson considered the actors as co-authors of the
script. Because Trinity cannot establish the requisite intent for Much Ado or Prairie Voices, the
actors cannot be considered joint authors for the purposes of copyright protection. [n10]

[54] Time Machine, as both the magistrate judge and the district court noted, is more problematic.
Paddy Lynn testified that at least two scenes from Time Machine were developed through a
collaborative process. Ms. Lynn considered the created dialogue to be hers as well as well as Ms.
Erickson's. Furthermore, there is evidence that Ms. Erickson, too, intended at the time to create a
joint work because she initially attributed the script to both Ms. Lynn and herself. Consequently,
Trinity has produced some evidence that there was the requisite intent for joint authorship with
regard to Time Machine. In Childress, the Second Circuit specifically acknowledged that "`billing'
or `credit'" may be evidence of intent to create a joint work. Id. at 508. Here there is evidence that
Ms. Lynn was credited with authorship of Time Machine.

[55] In order for the plays to be joint works under the Act, Trinity also must show that actors'
contributions to Ms. Erickson's work could have been independently copyrighted. Trinity cannot
establish this requirement for any of the above works. The actors, on the whole, could not identify
specific contributions that they had made to Ms. Erickson's works. Even when Michael Osborne
was able to do so, the contributions that he identified were not independently copyrightable. Ideas,
refinements, and suggestions, standing alone, are not the subjects of copyrights. Consequently,
Trinity cannot establish the two necessary elements of the copyrightability test and its claims must
fail.

[56] Trinity cannot establish joint authorship to the plays at issue. As a result, Trinity cannot
overcome the presumption in favor of the validity of Ms. Erickson's copyrights. Consequently, Ms.
Erickson is very likely to succeed on the merits of her claims for copyright infringement. [n11]

[57] Conclusion

[58] For the foregoing reasons, the judgment of the district court is affirmed.

[59] AFFIRMED.
 AALMUHAMMEDv.LEE,202F.3d1227(9thCir.2000)
Before:WilliamC.CANBY,Jr.,JohnT.NOONAN,andAndrewJ.KLEINFELD,Circuit
Judges.

KLEINFELD,CircuitJudge:

[1]ThisisacopyrightcaseinvolvingaclaimofcoauthorshipofthemovieMalcolmX.Wereject
the"jointwork"claimbutremandforfurtherproceedingsonaquantummeruitclaim.

I. FACTS

[3]In1991,WarnerBrotherscontractedwithSpikeLeeandhisproductioncompaniestomakethe
movieMalcolmX,tobebasedonthebook,TheAutobiographyofMalcolmX.Leecowrotethe
screenplay,directed,andcoproducedthemovie,whichstarredDenzelWashingtonasMalcolmX.
WashingtonaskedJefriAalmuhammedtoassisthiminhispreparationforthestarringrolebecause
AalmuhammedknewagreatdealaboutMalcolmXandIslam.Aalmuhammed,adevoutMuslim,
wasparticularlyknowledgeableaboutthelifeofMalcolmX,havingpreviouslywritten,directed,
andproducedadocumentaryfilmaboutMalcolmX.

[4]AalmuhammedjoinedWashingtononthemovieset.ThemoviewasfilmedintheNewYork
metropolitanareaandEgypt.Aalmuhammedpresentedevidencethathisinvolvementinmaking
themoviewasveryextensive.HereviewedtheshootingscriptforSpikeLeeand[p*1230]Denzel
Washingtonandsuggestedextensivescriptrevisions.Someofhisscriptrevisionswereincludedin
thereleasedversionofthefilm;otherswerefilmedbutnotincludedinthereleasedversion.Most
oftherevisionsAalmuhammedmadeweretoensurethereligiousandhistoricalaccuracyand
authenticityofscenesdepictingMalcolmX'sreligiousconversionandpilgrimagetoMecca.

[5]AalmuhammedsubmittedevidencethathedirectedDenzelWashingtonandotheractorswhile
ontheset,createdatleasttwoentiresceneswithnewcharacters,translatedArabicintoEnglishfor
subtitles,suppliedhisownvoiceforvoiceovers,selectedtheproperprayersandreligiouspractices
forthecharacters,andeditedpartsofthemovieduringpostproduction.Washingtontestifiedinhis
depositionthatAalmuhammed'scontributiontothemoviewas"great"becausehe"helpedto
rewrite,tomakemoreauthentic."Onceproductionended,Aalmuhammedmetwithnumerous
IslamicorganizationstopersuadethemthatthemoviewasanaccuratedepictionofMalcolmX's
life.

[6]AalmuhammedneverhadawrittencontractwithWarnerBrothers,Lee,orLee'sproduction
companies,butheexpectedLeetocompensatehimforhiswork.Hedidnotintendtoworkand
bearhisexpensesinNewYorkandEgyptgratuitously.Aalmuhammedultimatelyreceivedacheck
for$25,000fromLee,whichhecashed,andacheckfor$100,000fromWashington,whichhedid
notcash.
[7]DuringthesummerbeforeMalcolmX'sNovember1992release,Aalmuhammedaskedfora
writingcreditasacowriterofthefilm,butwasturneddown.Whenthefilmwasreleased,it
creditedAalmuhammedonlyasan"IslamicTechnicalConsultant,"fardownthelist.InNovember
1995,AalmuhammedappliedforacopyrightwiththeU.S.CopyrightOffice,claiminghewasaco
creator,cowriter,andcodirectorofthemovie.TheCopyrightOfficeissuedhima"Certificateof
Registration,"butadvisedhiminaletterthathis"claimsconflictwithpreviousregistrations"ofthe
film.

[8]OnNovember17,1995,AalmuhammedfiledacomplaintagainstSpikeLee,hisproduction
companies,andWarnerBrothers,(collectively"Lee"),aswellasLargoInternational,N.V.,and
LargoEntertainment,Inc.(collectively"Largo"),andVictorCompanyofJapanandJVC
Entertainment,Inc.(collectively"Victor").Thesuitsoughtdeclaratoryreliefandanaccounting
undertheCopyrightAct.Inaddition,thecomplaintallegedbreachofimpliedcontract,quantum
meruit,andunjustenrichment,andfederal(LanhamAct)andstateunfaircompetitionclaims.The
districtcourtdismissedsomeoftheclaimsunderRule12(b)(6)andtherestonsummaryjudgment.

II. ANALYSIS

A.Copyrightclaim

[9]AalmuhammedclaimedthatthemovieMalcolmXwasa"jointwork"ofwhichhewasan
author,thusmakinghimacoownerofthecopyright.[fn2]Hesoughtadeclaratoryjudgmenttothat
effect,andanaccountingforprofits.Heisnotclaimingcopyrightmerelyinwhathewroteor
contributed,butratherinthewholework,asacoauthorofa"jointwork."[fn3]Thedistrictcourt
granteddefendantssummaryjudgmentagainstMr.Aalmuhammed'scopyrightclaims.Wereview
denovo.[fn4]

[10]DefendantsarguethatAalmuhammed'sclaimthatheisoneoftheauthorsofajointworkis
barredbytheapplicablestatuteoflimitations.Aclaimofauthorshipofajointworkmustbe
broughtwithinthreeyearsofwhenitaccrues.[fn5]Becausecreationratherthaninfringement
[p*1231]isthegravamenofanauthorshipclaim,theclaimaccruesonaccountofcreation,not
subsequentinfringement,andisbarredthreeyearsfrom"plainandexpressrepudiation"of
authorship.[fn6]

[11]Themoviecreditsplainlyandexpresslyrepudiatedauthorship,bylistingAalmuhammedfar
belowthemoreprominentnames,asan"Islamictechnicalconsultant."Thatrepudiation,though,
waslessthanthreeyearsbeforethelawsuitwasfiled.Therecordleavesopenagenuineissueof
factastowhetherauthorshipwasrepudiatedbeforethat.Aalmuhammedtestifiedinhisdeposition
thathediscussedwithanexecutiveproduceratWarnerBrothershisclaimtocreditasoneofthe
screenwritersmorethanthreeyearsbeforehefiledsuit.Defendantsarguethatthisdiscussionwas
anexpressrepudiationthatbarstheclaim.Itwasnot.Aalmuhammedtestifiedthattheproducer
toldhim"thereisnothingIcandoforyou,"but"[h]esaidwewoulddiscussitfurtheratsome
point."Atrieroffactcouldconstruethatcommunicationasleavingthequestionofauthorshipopen
forfurtherdiscussion.Thatleavesagenuineissueoffactastowhethertheclaimisbarredby
limitations,sowemustdeterminewhetherthereisagenuineissueoffactastowhether
Aalmuhammedwasanauthorofa"jointwork."

[12]Aalmuhammedarguesthatheestablishedagenuineissueoffactastowhetherhewasan
authorofa"jointwork,"MalcolmX.TheCopyrightActdoesnotdefine"author,"butitdoes
define"jointwork":

A"jointwork"isaworkpreparedbytwoormoreauthorswiththeintentionthattheircontributions
bemergedintoinseparableorinterdependentpartsofaunitarywhole.[fn7]

[13]"Wheninterpretingastatute,welookfirsttothelanguage."[fn8]Thestatutorylanguage
establishesthatforaworktobea"jointwork"theremustbe(1)acopyrightablework,(2)twoor
more"authors,"and(3)theauthorsmustintendtheircontributionsbemergedintoinseparableor
interdependentpartsofaunitarywhole.A"jointwork"inthiscircuit"requireseachauthortomake
anindependentlycopyrightablecontribution"tothedisputedwork.[fn9]MalcolmXisa
copyrightablework,anditisundisputedthatthemoviewasintendedbyeveryoneinvolvedwithit
tobeaunitarywhole.ItisalsoundisputedthatAalmuhammedmadesubstantialandvaluable
contributionstothemovie,includingtechnicalhelp,suchasspeakingArabictothepersonsin
chargeofthemosqueinEgypt,scholarlyandcreativehelp,suchasteachingtheactorshowtopray
properlyasMuslims,andscriptchangestoaddverisimilitudetothereligiousaspectsofthemovie.
SpeakingArabictopersonsinchargeofthemosque,however,doesnotresultinacopyrightable
contributiontothemotionpicture.Coachingofactors,tobecopyrightable,mustbeturnedintoan
expressioninaformsubjecttocopyright.[fn10]Thesamemaybesaidformanyof
Aalmuhammed'sotheractivities.Aalmuhammedhas,however,submittedevidencethatherewrote
severalspecificpassagesofdialoguethatappearedinMalcolmX,andthathewrotescenesrelating
toMalcolmX'sHajjpilgrimagethatwereenactedinthemovie.IfAalmuhammed'sevidenceis
accepted,asitmustbeonsummaryjudgment,theseitemswouldhavebeenindependently
copyrightable.[p*1232]Aalmuhammed,therefore,haspresentedagenuineissueoffactasto
whetherhemadeacopyrightablecontribution.AllpersonsinvolvedintendedthatAalmuhammed's
contributionswouldbemergedintointerdependentpartsofthemovieasaunitarywhole.
Aalmuhammedmaintainsthathehasshownagenuineissueoffactforeachelementofa"joint
work."

[14]Butthereisanotherelementtoa"jointwork."A"jointwork"includes"twoormore
authors."[fn11]Aalmuhammedestablishedthathecontributedsubstantiallytothefilm,butnotthat
hewasoneofits"authors."Weholdthatauthorshipisrequiredunderthestatutorydefinitionofa
jointwork,andthatauthorshipisnotthesamethingasmakingavaluableandcopyrightable
contribution.Werecognizethatacontributorofanexpressionmaybedeemedtobethe"author"of
thatexpressionforpurposesofdeterminingwhetheritisindependentlycopyrightable.Theissuewe
dealwithisadifferentandlargerone:isthecontributoranauthorofthejointworkwithinthe
meaningof17U.S.C.
101.

[15]Bystatutorydefinition,a"jointwork"requires"twoormoreauthors."[fn12]Theword
"author"istakenfromthetraditionalactivityofonepersonsittingatadeskwithapenandwriting
somethingforpublication.Itisrelativelyeasytoapplytheword"author"toanovel.Itisalsoeasy
toapplythewordtotwopeoplewhoworktogetherinafairlytraditionalpenandinkway,like,
perhaps,GilbertandSullivan.Inthesong,"IAmtheVeryModelofaModernMajorGeneral,"
Gilbert'swordsandSullivan'stuneareinseparable,andanyonewhohasheardthesongknowsthat
itowesitsexistencetobothmen,SirWilliamGilbertandSirArthurSullivan,asitscreative
originator.Butasthenumberofcontributorsgrowsandtheworkitselfbecomeslesstheproductof
oneortwoindividualswhocreateitwithoutmuchhelp,thewordishardertoapply.

[16]Who,intheabsenceofcontract,canbeconsideredanauthorofamovie?Thewordis
traditionallyusedtomeantheoriginatororthepersonwhocausessomethingtocomeintobeing,or
eventhefirstcause,aswhenChaucerreferstothe"AuthorofNature."Foramovie,thatmightbe
theproducerwhoraisesthemoney.Eisensteinthoughttheauthorofamoviewastheeditor.The
"auteur"theorysuggeststhatitmightbethedirector,atleastifthedirectorisabletoimposehis
artisticjudgmentsonthefilm.Traditionally,byanalogytobooks,theauthorwasregardedasthe
personwhowritesthescreenplay,butoftenamoviereflectstheworkofmanyscreenwriters.
Greniersuggeststhatthepersonwithcreativecontroltendstobethepersoninwhosenamethe
moneyisraised,perhapsastar,perhapsthedirector,perhapstheproducer,withcontrolgravitating
tothestarasthefinancialinvestmentinscenesalreadyshotgrows.[fn13]Wherethevisualaspect
ofthemovieisespeciallyimportant,thechiefcinematographermightberegardedastheauthor.
Andfor,say,aDisneyanimatedmovielike"TheJungleBook,"itmightperhapsbetheanimators
andthecomposersofthemusic.

[17]TheSupremeCourtdealtwiththeproblemofdefining"author"innewmediainBurrowGiles
LithographicCo.v.Sarony.[fn14]Thequestiontherewas,whoistheauthorofaphotograph:the
personwhosetsitupandsnapstheshutter,orthepersonwhomakesthelithographfromit.Oscar
Wilde,thepersonwhosepicturewasatissue,doubtlessofferedsomecreativeadviceaswell.The
Courtdecidedthatthephotographerwastheauthor,quotingvariousEnglishauthorities:"the
personwhohassuperintendedthearrangement,whohasactuallyformedthepictureby[p*1233]
puttingthepersonsinposition,andarrangingtheplacewherethepeoplearetobethemanwhois
theeffectivecauseofthat";"`author'involvesoriginating,making,producing,astheinventiveor
mastermind,thethingwhichistobeprotected";"themanwhoreallyrepresents,creates,orgives
effecttotheidea,fancy,orimagination."[fn15]TheCourtsaidthatan"author,"inthesensethat
theFoundingFathersusedthetermintheConstitution,[fn16]was"`hetowhomanythingowesits
origin;originator;maker;onewhocompletesaworkofscienceorliterature.'"[fn17]

[18]Answeringadifferentquestion,whatisacopyrightable"work,"asopposedtowhoisthe
"author,"theSupremeCourtheldinFeistPublicationsthat"someminimallevelofcreativity"or
"originality"suffices.[fn18]Butthatmeasureofa"work"wouldbetoobroadandindeterminateto
beusefulifappliedtodeterminewhoare"authors"ofamovie.Somanypeoplemightqualifyasan
"author"ifthequestionwerelimitedtowhethertheymadeasubstantialcreativecontributionthat
thattestwouldnotdistinguishonefromanother.Everyonefromtheproduceranddirectorto
castingdirector,costumer,hairstylist,and"bestboy"getslistedinthemoviecreditsbecauseallof
theircreativecontributionsreallydomatter.ItisstrikinginMalcolmXhowmuchthepersonwho
controlledthehueofthelightingcontributed,yetnoonewouldusetheword"author"todenote
thatindividual'srelationshiptothemovie.Acreativecontributiondoesnotsufficetoestablish
authorshipofthemovie.

[19]BurrowGiles,indefining"author,"requiresmorethanaminimalcreativeororiginal
contributiontothework.[fn19]BurrowGilesisstillgoodlaw,andwasrecentlyreaffirmedinFeist
Publications.[fn20]BurrowGilesandFeistPublicationsanswertwodistinctquestions;whoisan
author,andwhatisacopyrightablework.[fn21]BurrowGilesdefinesauthorasthepersonto
whomtheworkowesitsoriginandwhosuperintendedthewholework,the"master
mind."[fn22]Inamoviethisdefinition,intheabsenceofacontracttothecontrary,would
generallylimitauthorshiptosomeoneatthetopofthescreencredits,sometimestheproducer,
sometimesthedirector,possiblythestar,orthescreenwritersomeonewhohasartisticcontrol.
Afterall,inBurrowGilesthelithographermadeasubstantialcopyrightablecreativecontribution,
andsodidthepersonwhoposed,OscarWilde,buttheCourtheldthatthephotographerwasthe
author.[fn23]

[20]TheSecondandSeventhCircuitshavelikewiseconcludedthatcontributionofindependently
copyrightablematerialtoaworkintendedtobeaninseparablewholewillnotsufficetoestablish
authorshipofajointwork.[fn24]AlthoughtheSecondandSeventhCircuitsdonotbasetheir
decisionsontheword"authors"inthestatute,[p*1234]thepracticalresultstheyreachare
consistentwithours.Thesecircuitshaveheldthatapersonclaimingtobeanauthorofajointwork
mustprovethatbothpartiesintendedeachothertobejointauthors.[fn25]Indeterminingwhether
thepartieshavetheintenttobejointauthors,theSecondCircuitlooksatwhohasdecisionmaking
authority,howthepartiesbillthemselves,andotherevidence.[fn26]

[21]InThomsonv.Larson,anoffBroadwayplaywrighthadcreatedamodernversionofLa
Boheme,andhadbeenadamantthroughoutitscreationonbeingthesoleauthor.[fn27]Hehireda
dramaprofessorfor"dramaturgicalassistanceandresearch,"agreeingtocreditheras"dramaturg"
butnotauthor,butsayingnothingabout"jointwork"orcopyright.[fn28]Theplaywrighttragically
diedimmediatelyafterthefinaldressrehearsal,justbeforehisplaybecamethetremendous
Broadwayhit,Rent.[fn29]Thedramaturgthensuedhisestateforadeclaratoryjudgmentthatshe
wasanauthorofRentasa"jointwork,"andforanaccounting.[fn30]TheSecondCircuitnotedthat
thedramaturghadnodecisionmakingauthority,hadneithersoughtnorwasbilledasacoauthor,
andthatthedefendantenteredintocontractsasthesoleauthor.[fn31]Onthisreasoning,theSecond
Circuitheldthattherewasnointenttobejointauthorsbytheputativepartiesandthereforeitwas
notajointwork.[fn32]

[22]ConsideringBurrowGiles,therecentcasesonjointworks[fn33](especiallythethoughtful
opinioninThomsonv.Larson[fn34]),andtheGilbertandSullivanexample,severalfactorssuggest
themselvesasamongthecriteriaforjointauthorship,intheabsenceofcontract.First,anauthor
"superintend[s]"[fn35]theworkbyexercisingcontrol.[fn36]Thiswilllikelybeaperson"whohas
actuallyformedthepicturebyputtingthepersonsinposition,andarrangingtheplacewherethe
peoplearetobethemanwhoistheeffectivecauseofthat,"[fn37]or"theinventiveormaster
mind"who"creates,orgiveseffecttotheidea."[fn38]Second,putativecoauthorsmakeobjective
manifestationsofasharedintenttobecoauthors,asbydenotingtheauthorshipofThePiratesof
Penzanceas"GilbertandSullivan."[fn39]Wesayobjectivemanifestationsbecause,werethe
mutualintenttobedeterminedbysubjectiveintent,itcouldbecomeaninstrumentoffraud,were
onecoauthortohidefromtheotheranintentiontotakesolecreditforthework.Third,theaudience
appealoftheworkturnsonbothcontributionsand"theshareofeachinitssuccesscannotbe
appraised."[fn40]Controlinmanycaseswillbethemostimportantfactor.[p*1235]

[23]Thebestobjectivemanifestationofasharedintent,ofcourse,isacontractsayingthatthe
partiesintendtobeornottobecoauthors.Intheabsenceofacontract,theinquirymustof
necessityfocusonthefacts.ThefactorsarticulatedinthisdecisionandtheSecondandSeventh
Circuitdecisionscannotbereducedtoarigidformula,becausethecreativerelationshipstowhich
theyapplyvarytoomuch.Differentpeopledocreativeworktogetherindifferentways,andeven
amongthesamepeopleworkingtogethertherelationshipmaychangeovertimeasthework
proceeds.

[24]Aalmuhammeddidnotatanytimehavesuperintendenceofthework.[fn41]WarnerBrothers
andSpikeLeecontrolledit.Aalmuhammedwasnottheperson"whohasactuallyformedthe
picturebyputtingthepersonsinposition,andarrangingtheplace...."[fn42]SpikeLeewas,sofar
aswecantellfromtherecord.Aalmuhammed,likeLarson'sdramaturg,couldmakeextremely
helpfulrecommendations,butSpikeLeewasnotboundtoacceptanyofthem,andtheworkwould
notbenefitintheslightestunlessSpikeLeechosetoacceptthem.Aalmuhammedlackedcontrol
overthework,andabsenceofcontrolisstrongevidenceoftheabsenceofcoauthorship.

[25]Also,neitherAalmuhammed,norSpikeLee,norWarnerBrothers,madeanyobjective
manifestationsofanintenttobecoauthors.WarnerBrothersrequiredSpikeLeetosigna"workfor
hire"agreement,sothatevenLeewouldnotbeacoauthorandcoownerwithWarnerBrothers.It
wouldbeillogicaltoconcludethatWarnerBrothers,whilenotwantingtopermitLeetoownthe
copyright,intendedtoshareownershipwithindividualslikeAalmuhammedwhoworkedunder
Lee'scontrol,especiallyoneswhoatthetimehadmadeknownnoclaimtotheroleofcoauthor.
Noone,includingAalmuhammed,madeanyindicationtoanyonepriortolitigationthat
Aalmuhammedwasintendedtobeacoauthorandcoowner.

[26]Aalmuhammedofferednoevidencethathewasthe"inventiveormastermind"ofthemovie.
HewastheauthorofanotherlesswidelyknowndocumentaryaboutMalcolmX,butwasnotthe
masterofthisone.WhatAalmuhammed'sevidenceshowed,andallitshowed,wasthat,subjectto
SpikeLee'sauthoritytoacceptthem,hemadeveryvaluablecontributionstothemovie.Thatisnot
enoughforcoauthorshipofajointwork.

[27]TheConstitutionestablishesthesocialpolicythatourconstructionofthestatutoryterm
"authors"carriesout.TheFoundingFathersgaveCongressthepowertogiveauthorscopyrightsin
order"[t]opromotetheprogressofScienceandusefularts."[fn43]Progresswouldberetarded
ratherthanpromoted,ifanauthorcouldnotconsultwithothersandadopttheirusefulsuggestions
withoutsacrificingsoleownershipofthework.Tooopenadefinitionofauthorwouldcompel
authorstoinsulatethemselvesandmaintainignoranceofthecontributionsothersmightmake.
SpikeLeecouldnotconsultascholarlyMuslimtomakeamovieaboutareligiousconversionto
Islam,andtheartswouldbethepoorerforthat.

[28]ThebroaderconstructionthatAalmuhammedproposeswouldextendjointauthorshiptomany
"overreachingcontributors,"[fn44]likethedramaturginThomson,anddenysoleauthors
"exclusiveauthorshipstatussimplybecauseanotherpersonrender[ed]someformof
assistance."[fn45]Claimjumpingbyresearchassistants,editors,andformerspouses,loversand
friendswouldendangerauthorswhotalkedwithpeopleaboutwhattheywere[p*1236]doing,if
creativecopyrightablecontributionwereallthatauthorshiprequired.

[29]Aalmuhammedalsoarguesthatissuanceofacopyrightregistrationcertificatetohim
establishesaprimafaciecaseforownership.Aprimafaciecasecouldnotinanyeventprevent
summaryjudgmentinthepresenceofalltheevidencerebuttinghisclaimofownership."The
presumptivevalidityofthecertificatemayberebuttedanddefeatedonsummary
judgment."[fn46]TheCopyrightOfficestatedinitsresponsetoAalmuhammed'sapplicationfor
copyright(duringthependencyofthislitigation)thathisclaims"conflictwithpreviousregistration
claims,"andthereforetheCopyrightOfficehad"severalquestions"forhim.Oneofthequestions
dealtwiththe"intent"of"otherauthors,"i.e.,WarnerBrothers.Theevidencediscussedabove
establisheswithoutgenuineissuethattheanswerstothesequestionswerethatWarnerBrothersdid
notintendtoshareownershipwithAalmuhammed.

[30]Becausetherecordbeforethedistrictcourtestablishednogenuineissueoffactasto
Aalmuhammed'scoauthorshipofMalcolmXasajointwork,thedistrictcourtcorrectlygranted
summaryjudgmentdismissinghisclaimsfordeclaratoryjudgmentandanaccountingrestingon
coauthorship.

B.Quantummeruit

[31]Aalmuhammedallegedinhiscomplaintthatdefendantsacceptedhisservices,knowingthat
theywerenotbeingprovidedgratuitously,yetpaidhimneitherthefairvalueofhisservicesnor
evenhisfullexpenses.Hewrotescriptmaterial,particularlyfortheimportantIslamicreligious
scenes,arrangedwiththeEgyptiansinchargeofthemosqueforthemovietobeshotinside
(AalmuhammedisaMuslimandwastheonlyArabicspeakingpersonintheproductioncrew),
taughttheactorshowtoprayasMuslimsanddirectedtheprayerscenes,andtalkedtoIslamic
authoritiesafterthemoviewasmadetoassuretheirsupportwhenitwasexhibited.Theseservices
wereveryimportant.Themoviewouldbeadarktaleofhate,butfortheredemptive,uplifting
Islamicreligiousscenes.

[32]AlltheserviceswereperformedinNewYorkandinEgypt(wheretheHajjsceneswereshot).
Aalmuhammed'sfifth,sixthandseventhclaimsarticulatedthisclaimvariouslyasquasicontract,
quantummeruit,andunjustenrichment.TheseclaimsaredifferentfromAalmuhammed'sclaimto
authorshipofajointwork.Eventhoughhewasnotanauthor,itisundisputedthathemadea
substantialcontributiontothefilm.Itmaybethattheproducerordirector,seeingthat
Aalmuhammedwasperformingvaluableandsubstantialservicesandexpendingsubstantial
amountsfortravelandlodging,intheapparentexpectationofreimbursement,hadadutytosign
himupasanemployeeorindependentcontractor,obtainhisacknowledgmentthathewasworking
gratuitouslyorperhapsforDenzelWashington,orejecthimfromtheset.[fn47]Weneednot
decidethat,becausethequestiononreviewislimitedtowhichstate'sstatuteoflimitationsapplies.

[33]ThedefendantsmovedtodismisstheseclaimsforfailuretostateaclaimunderRule12(b)(6),
onthegroundthattheclaimswerebarredbyCalifornia'stwoyearstatuteoflimitations.
AalmuhammedarguedthatNewYork'ssixyearstatuteoflimitationsapplied.Thedistrictcourt
grantedthemotiontodismiss,applyingCalifornia'sshorterstatute.

[34]Thepartiesagreethatthedistrictcourtcorrectlyusedlawoftheforum,California,[p*1237]as
thesourceofitsruleforchoiceoflaw.Theapplicablerulerequired,inthiscase,that"thecourt
mustapplythelawofthestatewhoseinterestwouldbemoreimpairedifitslawwerenot
applied."[fn48]

[35]DefendantsarguethatonlyCaliforniahadaninterestintheapplicationofitsstatuteof
limitations,notNewYork.Theirtheoryisthatthedefendantcorporationshavetheirprincipal
placesofbusinessinCalifornia,Aalmuhammedresidedinneitherstate(helivesinFlorida,though
hespentthemonthsofshootingtimeinNewYorkandEgypt),andAalmuhammedfiledhislawsuit
inCalifornia.

[36]Thedefenseargumentisunpersuasive.Thequestioniswhichstate'sinterestwouldsuffermore
bytheapplicationoftheother'slaw.[fn49]Thestrengthoftheinterestisalsoafactor,however.
[fn50]California'sinterestinprotectingitsresidentsfromstaleclaimsarisingfromworkdone
outsidethestateisaweakone:"[t]heresidenceofthepartiesisnotthedeterminingfactorina
choiceoflawanalysis."[fn51]NewYork'sinterestingoverningtheremediesavailabletoparties
workinginnewYorkisfarmoresignificant.[fn52]NewYork'sconnectionwithAalmuhammed's
claimisconsiderablymoresubstantial,immediateandconcretethanCalifornia's.Weconcludethat
NewYorkwouldsuffermoredamagetoitsinterestifCalifornialawwereappliedthanwould
CaliforniaifNewYorklawwereapplied.

[37]BecauseNewYorkhasthestrongerinterestandwouldsuffermoredamagethanCaliforniaif
itslawwerenotapplied,NewYork'ssixyearstatuteoflimitationsgoverns.Theclaimswere
broughtwithinsixyearsofwhentheyaccrued.Wethereforevacatethedismissalof
Aalmuhammed'simpliedcontract,quantummeruit,andunjustenrichmentclaimsandremandthem
forfurtherproceedings.

C.Unfaircompetition

[38]Aalmuhammedclaimedthatdefendantspassedoffhisscriptwriting,directingandotherwork
asthatofotherpersons,inviolationoftheLanhamAct[fn53]andtheCaliforniastatuteprohibiting
unfaircompetition.[fn54]ThedismissalwasunderRule12(b)(6),forfailuretostateaclaimupon
whichreliefcanbegranted,sowereviewdenovo,[fn55]onthebasisofallegationsinthe
complaint.[fn56]
[39]Wehaveheldthat,atleastinsomecircumstances,failuretogiveappropriatecreditforafilm
is"reversepalmingoff"actionableundertheLanhamAct.[fn57]Andwehaveheldthat"actions
pursuanttoCaliforniaBusinessandProfessionsCode17200aresubstantiallycongruentto
claimsmadeundertheLanhamAct."[fn58]DefendantsarguethatnotenoughofAalmuhammed's
proposedscriptwasusedverbatimtoamounttoaviolation.Butthisargumentgoestotheevidence,
notthecomplaint,soitcannotsustainthe12(b)(6)dismissal.Thecomplaintallegedthat
Aalmuhammed"substantiallyrewroteandexpandedthedialogueforvariousentire[p*1238]
scenes"andotherwiseallegedextensiveandsubstantialuseofhisworkinthefinalmovie.Weneed
notdeterminewhetherAalmuhammedestablishedagenuineissueoffactregardingunfair
competition,becausetheclaimnevergotasfarassummaryjudgmentinthedistrictcourt.We
reversethedismissalofthesetwoclaims.

D.Conductabroad

[40]ThedistrictcourtdismissedAalmuhammed'sclaimsagainsttheLargodefendantsunderRule
12(b)(6)forfailuretostateaclaim.ThedismissalwasbasedonourdecisioninSubafilms,thatacts
ofcopyrightinfringementthatoccurwhollyoutsideoftheUnitedStatesarenotactionableunder
theU.S.CopyrightAct.[fn59]

[41]ThecomplaintdoesnotsaywhethertheLargodefendants'conductoccurredoutsidetheUnited
States.Defendantsarguethatitdoes,byreferringtothemas"thefilm'sforeigndistributors."Butit
alsosaysthattheirprincipalplaceofbusinessisinCalifornia.Theseallegationsleaveroomfor
proofthattheconductthattheLargodefendantsengagedintookplacewithinCalifornia,even
thoughithadconsequencesabroad.Wecannottellfromthecomplaintwhetherforeigndistributors
dotheirworkinforeigncountries,ordoitbyfax,phone,andemailfromCalifornia.Wetherefore
reversethedismissalbasedonextraterritorialityoftheclaimsagainsttheLargodefendants.

[42]AFFIRMEDinpart,REVERSEDandREMANDEDinpart.Eachpartytobearitsowncosts.
 COMMUNITY FOR CREATIVE NON-VIOLENCE v.
REID, 490 U.S. 730 (1989)
MARSHALL, J., delivered the opinion for a unanimous
Court.

[1] In this case, an artist and the organization that hired him to produce a sculpture contest the
ownership of the copyright in that work. To resolve this dispute, we must construe the "work made
for hire" provisions of the Copyright Act of 1976 (Act or 1976 Act), 17 U.S.C. 101 and
201(b), and in particular, the provision in 101, which defines as a "work made for hire" a "work
prepared by an employee within the scope of his or her employment" (hereinafter 101(1)).
[p*733]

[2] Petitioners are the Community for Creative Non-Violence (CCNV), a nonprofit unincorporated
association dedicated to eliminating homelessness in America, and Mitch Snyder, a member and
trustee of CCNV. In the fall of 1985, CCNV decided to participate in the annual Christmastime
Pageant of Peace in Washington, D.C., by sponsoring a display to dramatize the plight of the
homeless. As the District Court recounted:

Snyder and fellow CCNV members conceived the idea for the nature of the display: a sculpture of a
modern Nativity scene in which, in lieu of the traditional Holy Family, the two adult figures and the
infant would appear as contemporary homeless people huddled on a streetside steam grate. The
family was to be black (most of the homeless in Washington being black); the figures were to be
life-sized, and the steam grate would be positioned atop a platform "pedestal," or base, within
which special effects equipment would be enclosed to emit simulated "steam" through the grid to
swirl about the figures. They also settled upon a title for the work -- "Third World America" -- and
a legend for the pedestal: "and still there is no room at the inn."

652 F.Supp. 1453, 1454 (DC 1987).

[3] Snyder made inquiries to locate an artist to produce the sculpture. He was referred to respondent
James Earl Reid, a Baltimore, Maryland, sculptor. In the course of two telephone calls, Reid agreed
to sculpt the three human figures. CCNV agreed to make the steam grate and pedestal for the statue.
Reid proposed that the work be cast in bronze, at a total cost of approximately $100,000 and taking
six to eight months to complete. Snyder rejected that proposal because CCNV did not have
sufficient funds, and because the statue had to be completed by December 12 to be included in the
pageant. Reid then suggested, and Snyder agreed, that the [p*734] sculpture would be made of a
material known as "Design Cast 62," a synthetic substance that could meet CCNV's monetary and
time constraints, could be tinted to resemble bronze, and could withstand the elements. The parties
agreed that the project would cost no more than $15,000, not including Reid's services, which he
offered to donate. The parties did not sign a written agreement. Neither party mentioned copyright.
[4] After Reid received an advance of $3,000, he made several sketches of figures in various poses.
At Snyder's request, Reid sent CCNV a sketch of a proposed sculpture showing the family in a
creche-like setting: the mother seated, cradling a baby in her lap; the father standing behind her,
bending over her shoulder to touch the baby's foot. Reid testified that Snyder asked for the sketch to
use in raising funds for the sculpture. Snyder testified that it was also for his approval. Reid sought
a black family to serve as a model for the sculpture. Upon Snyder's suggestion, Reid visited a
family living at CCNV's Washington shelter, but decided that only their newly born child was a
suitable model. While Reid was in Washington, Snyder took him to see homeless people living on
the streets. Snyder pointed out that they tended to recline on steam grates, rather than sit or stand, in
order to warm their bodies. From that time on, Reid's sketches contained only reclining figures.

[5] Throughout November and the first two weeks of December, 1985, Reid worked exclusively on
the statue, assisted at various times by a dozen different people who were paid with funds provided
in installments by CCNV. On a number of occasions, CCNV members visited Reid to check on his
progress and to coordinate CCNV's construction of the base. CCNV rejected Reid's proposal to use
suitcases or shopping bags to hold the family's personal belongings, insisting instead on a shopping
cart. Reid and CCNV members did not discuss copyright ownership on any of these visits. [p*735]

[6] On December 24, 1985, 12 days after the agreed-upon date, Reid delivered the completed statue
to Washington. There it was joined to the steam grate and pedestal prepared by CCNV, and placed
on display near the site of the pageant. Snyder paid Reid the final installment of the $15,000. The
statue remained on display for a month. In late January, 1986, CCNV members returned it to Reid's
studio in Baltimore for minor repairs. Several weeks later, Snyder began making plans to take the
statue on a tour of several cities to raise money for the homeless. Reid objected, contending that the
Design Cast 62 material was not strong enough to withstand the ambitious itinerary. He urged
CCNV to cast the statue in bronze at a cost of $35,000, or to create a master mold at a cost of
$5,000. Snyder declined to spend more of CCNV's money on the project.

[7] In March, 1986, Snyder asked Reid to return the sculpture. Reid refused. He then filed a
certificate of copyright registration for "Third World America" in his name, and announced plans to
take the sculpture on a more modest tour than the one CCNV had proposed. Snyder, acting in his
capacity as CCNV's trustee, immediately filed a competing certificate of copyright registration.

[8] Snyder and CCNV then commenced this action against Reid and his photographer, Ronald
Purtee, [n1] seeking return of the sculpture and a determination of copyright ownership. The District
Court granted a preliminary injunction, ordering the sculpture's return. After a 2-day bench trial, the
District Court declared that "Third World America" was a "work made for hire" under 101 of the
Copyright Act, and that Snyder, as trustee for CCNV, was the exclusive owner of the copyright in
the sculpture. 652 F.Supp. at 1457. The court reasoned that Reid had been an "employee" of CCNV
within the meaning of 101(1) because CCNV was the motivating force in the statue's
production. Snyder and [p*736] other CCNV members, the court explained, "conceived the idea of
a contemporary Nativity scene to contrast with the national celebration of the season," and
"directed enough of [Reid's] effort to assure that, in the end, he had produced what they, not he,
wanted." Id. at 1456.
[9] The Court of Appeals for the District of Columbia Circuit reversed and remanded, holding that
Reid owned the copyright because "Third World America" was not a work for hire. 270
U.S.App.D.C. 26, 35, 846 F.2d 1485, 1494 (1988). Adopting what it termed the "literal
interpretation" of the Act as articulated by the Fifth Circuit in Easter Seal Society for Crippled
Children and Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323, 329 (1987), cert.
denied, 485 U.S. 981 (1988), the court read 101 as creating "a simple dichotomy in fact between
employees and independent contractors." 270 U.S.App.D.C. at 33, 846 F.2d at 1492. Because,
under agency law, Reid was an independent contractor, the court concluded that the work was not
"prepared by an employee" under 101(1). Id. at 35, 846 F.2d at 1494. Nor was the sculpture a
"work made for hire" under the second subsection of 101 (hereinafter 101(2)): sculpture is
not one of the nine categories of works enumerated in that subsection, and the parties had not
agreed in writing that the sculpture would be a work for hire. Ibid. The court suggested that the
sculpture nevertheless may have been jointly authored by CCNV and Reid, id. at 36, 846 F.2d at
1495, and remanded for a determination whether the sculpture is indeed a joint work under the
Act, id. at 39-40, 846 F.2d at 1498-1499.

[10] We granted certiorari to resolve a conflict among the Courts of Appeals over the proper
construction of the "work made for hire" provisions of the Act. [n2] 488 U.S. 940 (1988). We now
affirm. [p*737]

II

[11] The Copyright Act of 1976 provides that copyright ownership "vests initially in the author or
authors of the work." 17 U.S.C. 201(a). 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. 102. The Act carves out an important exception, however, for "works
made for hire." [n3] If the work is for hire, "the employer or other person for whom the work was
prepared is considered the author," and owns the copyright, unless there is a written agreement to
the contrary. 201(b). Classifying a work as "made for hire" determines not only the initial
ownership of its copyright, but also the copyright's duration, 302(c), and the owners' renewal
rights, 304(a), termination rights, 203(a), and right to import certain goods bearing the
copyright, 601(b)(1). See 1 M. Nimmer & D. Nimmer, Nimmer on Copyright 5.03 [A], pp. 5-
10 (1988). The contours of the work for hire doctrine therefore carry profound significance for
freelance creators -- including artists, writers, photographers, designers, composers, and computer
programmers -- and for the publishing, advertising, music, and other industries which commission
their works. [n4] [p*738]

[12] Section 101 of the 1976 Act provides that a work is "for hire" under two sets of circumstances:

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a
part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a
compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the
parties expressly agree in a written instrument signed by them that the work shall be considered a
work made for hire. [n5]

[13] Petitioners do not claim that the statue satisfies the terms of 101(2). Quite clearly, it does
not. Sculpture does not fit within any of the nine categories of "specially ordered or commissioned"
works enumerated in that subsection, and no written agreement between the parties establishes
"Third World America" as a work for hire.

[14] The dispositive inquiry in this case therefore is whether "Third World America" is "a work
prepared by an employee within the scope of his or her employment" under 101(1). The Act
does not define these terms. In the absence of such guidance, four interpretations have emerged.
The first holds that a work is prepared by an employee whenever the hiring party [n6] retains the
right to control the product. See Peregrine v. Lauren Corp., 601 F.Supp. 828, 829
(Colo.1985); Clarkstown v. Reeder, 566 F.Supp. 137, 142 (SDNY 1983). [p*739] Petitioners take
this view. Brief for Petitioners 15; Tr. of Oral. Arg. 12. A second, and closely related, view is that a
work is prepared by an employee under 101(1) when the hiring party has actually wielded
control with respect to the creation of a particular work. This approach was formulated by the Court
of Appeals for the Second Circuit, Aldon Accessories Ltd. v. Spiegel, Inc., 738 F.2d 548, cert.
denied, 469 U.S. 982 (1984), and adopted by the Fourth Circuit, Brunswick Beacon, Inc. v. Schock-
Hopchas Publishing Co., 810 F.2d 410 (1987), the Seventh Circuit, Evans Newton, Inc. v. Chicago
Systems Software, 793 F.2d 889, cert. denied, 479 U.S. 949 (1986), and, at times, by petitioners,
Brief for Petitioners 17. A third view is that the term "employee" within 101(1) carries its
common law agency law meaning. This view was endorsed by the Fifth Circuit in Easter Seal
Society for Crippled Children and Adults of Louisiana, Inc. v. Playboy Enterprises, 815 F.2d 323
(1987), and by the Court of Appeals below. Finally, respondent and numerous amici curiae contend
that the term "employee" only refers to "formal, salaried" employees. See, e.g., Brief for
Respondent 23-24; Brief for Register of Copyrights as Amicus Curiae 7. The Court of Appeals for
the Ninth Circuit recently adopted this view. See Dumas v. Gommerman, 865 F.2d 1093 (1989).

[15] The starting point for our interpretation of a statute is always its language. Consumer Product
Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108 (1980). The Act nowhere defines the terms
"employee" or "scope of employment." It is, however, well established that

[w]here Congress uses terms that have accumulated settled meaning under . . . the common law, a
court must infer, unless the statute otherwise dictates, that Congress means to incorporate the
established meaning of these terms.

NLRB v. Amax Coal Co., 453 U.S. 322, 329 (1981); see also Perrin v. United States, 444 U.S. 37,
42 (1979). In the past, when Congress has used the term "employee" without defining it, [p*740]
we have concluded that Congress intended to describe the conventional master-servant relationship
as understood by common law agency doctrine. See, e.g., Kelley v. Southern Pacific Co., 419 U.S.
318, 322-323 (1974); Baker v. Texas & Pacific R. Co., 359 U.S. 227, 228 (1959) (per
curiam); Robinson v. Baltimore & Ohio R. Co., 237 U.S. 84, 94 (1915). Nothing in the text of the
work for hire provisions indicates that Congress used the words "employee" and "employment" to
describe anything other than "`the conventional relation of employer and employe.'" Kelley,
supra, at 323, quoting Robinson, supra, at 94; compare NLRB v. Hearst Publications, Inc., 322 U.S.
111, 124-132 (1944) (rejecting agency law conception of employee for purposes of the National
Labor Relations Act where structure and context of statute indicated broader definition). On the
contrary, Congress' intent to incorporate the agency law definition is suggested by 101(1)'s use
of the term, "scope of employment," a widely used term of art in agency law. See Restatement
(Second) of Agency 228 (1958) (hereinafter Restatement).

[16] In past cases of statutory interpretation, when we have concluded that Congress intended terms
such as "employee," "employer," and "scope of employment" to be understood in light of agency
law, we have relied on the general common law of agency, rather than on the law of any particular
State, to give meaning to these terms. See, e.g., Kelley, 419 U.S. at 323-324, and n. 5; id. at 332
(Stewart, J., concurring in judgment); Ward v. Atlantic Coast Line R. Co., 362 U.S. 396, 400
(1960); Baker, supra, at 228. This practice reflects the fact that "federal statutes are generally
intended to have uniform nationwide application." Mississippi Band of Choctaw Indians v.
Holyfield, ante at 43. Establishment of a federal rule of agency, rather than reliance on state agency
law, is particularly appropriate here, given the Act's express objective of creating national, uniform
copyright law by broadly preempting state statutory and common law copyright regulation. See 17
U.S.C. 301(a). We thus [p*741] agree with the Court of Appeals that the term "employee"
should be understood in light of the general common law of agency.

[17] In contrast, neither test proposed by petitioners is consistent with the text of the Act. The
exclusive focus of the right to control the product test on the relationship between the hiring party
and the product clashes with the language of 101(1), which focuses on the relationship between
the hired and hiring parties. The right to control the product test also would distort the meaning of
the ensuing subsection, 101(2). Section 101 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. The right to control the product test ignores this dichotomy by transforming
into a work for hire under 101(1) any "specially ordered or commissioned" work that is subject
to the supervision and control of the hiring party. Because a party who hires a "specially ordered or
commissioned" work by definition has a right to specify the characteristics of the product desired,
at the time the commission is accepted, and frequently until it is completed, the right to control the
product test would mean that many works that could satisfy 101(2) would already have been
deemed works for hire under 101(1). Petitioners' interpretation is particularly hard to square
with 101(2)'s enumeration of the nine specific categories of specially ordered or commissioned
works eligible to be works for hire, e.g., "a contribution to a collective work," "a part of a motion
picture," and "answer material for a test." The unifying feature of these works is that they are
usually prepared at the instance, direction, and risk of a publisher or producer. [n7] By their very
nature, therefore, these types of [p*742] works would be works by an employee under petitioners'
right to control the product test.

[18] The actual control test, articulated by the Second Circuit in Aldon Accessories, fares only
marginally better when measured against the language and structure of 101. Under this test,
independent contractors who are so controlled and supervised in the creation of a particular work
are deemed "employees" under 101(1). Thus, work for hire status under 101(1) depends on a
hiring party's actual control of, rather than right to control, the product. Aldon Accessories, 738
F.2d at 552. Under the actual control test, a work for hire could arise under 101(2), but not under
 101(1), where a party commissions, but does not actually control, a product which falls into one
of the nine enumerated categories. Nonetheless, we agree with the Fifth Circuit Court of Appeals
that "[t]here is simply no way to milk the `actual control' test of Aldon Accessories from the
language of the statute." Easter Seal Society, 815 F.2d at 334. Section 101 clearly delineates
between works prepared by an employee and commissioned works. Sound though other
distinctions might be as a matter of copyright policy, there is no statutory support for an additional
dichotomy between commissioned works that are actually controlled and supervised by the hiring
party and those that are not.

[19] We therefore conclude that the language and structure of 101 of the Act do not support
either the right to control the product or the actual control approaches. [n8] The structure of [p*743]
101 indicates that a work for hire can arise through one of two mutually exclusive means, one
for employees and one for independent contractors, and ordinary canons of statutory interpretation
indicate that the classification of a particular hired party should be made with reference to agency
law.

[20] This reading of the undefined statutory terms finds considerable support in the Act's legislative
history. Cf. Diamond v. Chakrabarty, 447 U.S. 303, 315 (1980). The Act, which almost completely
revised existing copyright law, was the product of two decades of negotiation by representatives of
creators and copyright-using industries, supervised by the Copyright Office and, to a lesser extent,
by Congress. See Mills Music, Inc. v. Snyder, 469 U.S. 153, 159 (1985); Litman, Copyright,
Compromise, and Legislative History, 72 Cornell L.Rev. 857, 862 (1987). Despite the lengthy
history of negotiation and compromise which ultimately produced the Act, two things remained
constant. First, interested parties and Congress at all times viewed works by employees and
commissioned works by independent contractors as separate entities. Second, in using the term
"employee," the parties and Congress meant to refer to a hired party in a conventional employment
relationship. These factors militate in favor of the reading we have found appropriate.

[21] In 1955, when Congress decided to overhaul copyright law, the existing work for hire
provision was 62 of the 1909 Copyright Act, 17 U.S.C. 26 (1976 ed.) (1909 Act). It provided
that "the word `author' shall include an employer in [p*744] the case of works made for
hire." [n9] Because the 1909 Act did not define "employer" or "works made for hire," the task of
shaping these terms fell to the courts. They concluded that the work for hire doctrine codified in
62 referred only to works made by employees in the regular course of their employment. As for
commissioned works, the courts generally presumed that the commissioned party had impliedly
agreed to convey the copyright, along with the work itself, to the hiring party. See, e.g., Shapiro,
Bernstein & Co. v. Jerry Vogel Music Co., 221 F.2d 569, 570, aff'd, 223 F.2d 252 (CA2
1955); Yardley v. Houghton Mifflin Co., 108 F.2d 28, 31 (CA2 1939), cert. denied, 309 U.S. 686
(1940). [n10]

[22] In 1961, the Copyright Office's first legislative proposal retained the distinction between works
by employees and works by independent contractors. See Report of the Register of Copyrights on
the General Revision of the U.S. Copyright Law, 87th Cong., 1st Sess., Copyright Law Revision
86-87 (H. Judiciary Comm. Print 1961). After numerous meetings with representatives of the
affected parties, the Copyright Office issued a preliminary draft bill in 1963. Adopting the
Register's recommendation, it defined "work [p*745] made for hire" as
a work prepared by an employee within the scope of the duties of his employment, but not
including a work made on special order or commission.

Preliminary Draft for Revised U.S. Copyright Law and Discussions and Comments on the Draft,
88th Cong., 2d Sess., Copyright Law Revision, Part 3, p. 15, n. 11 (H. Judiciary Comm. Print 1964)
(hereinafter Preliminary Draft).

[23] In response to objections by book publishers that the preliminary draft bill limited the work for
hire doctrine to "employees," [n11] the 1964 revision bill expanded the scope of the work for hire
classification to reach, for the first time, commissioned works. The bill's language, proposed
initially by representatives of the publishing industry, retained the definition of work for hire
insofar as it referred to "employees," but added a separate clause covering commissioned works,
without regard to the subject matter, "if the parties so agree in writing." S. 3008, H.R. 11947, H.R.
12354, 88th Cong., 2d Sess., 54 (1964), reproduced in 1964 Revision Bill with Discussions and
Comments, 89th Cong., 1st Sess., Copyright Law Revision, pt. 5, p. 31 (H.R. Judiciary Comm.
Print 1965). Those representing authors objected that the added provision would allow publishers to
use their superior bargaining position to force authors to sign work for hire agreements, [p*746]
thereby relinquishing all copyright rights as a condition of getting their books
published. See Supplementary Report, at 67.

[24] In 1965, the competing interests reached an historic compromise, which was embodied in a
joint memorandum submitted to Congress and the Copyright Office, [n12]incorporated into the 1965
revision bill, and ultimately enacted in the same form and nearly the same terms 11 years later, as
101 of the 1976 Act. The compromise retained as subsection (1) the language referring to "a
work prepared by an employee within the scope of his employment." However, in exchange for
concessions from publishers on provisions relating to the termination of transfer rights, the authors
consented to a second subsection which classified four categories of commissioned works as works
for hire if the parties expressly so agreed in writing: works for use "as a contribution to a collective
work, as a part of a motion picture, as a translation, or as supplementary work." S. 1006, H.R. 4347,
H.R. 5680, H.R. 6835, 89th Cong., 1st Sess., 101 (1965). The interested parties selected these
categories because they concluded that these commissioned works, although not prepared by
employees, and thus not covered by the first subsection, nevertheless should be treated as works for
hire because they were ordinarily prepared "at the instance, direction, and risk of a publisher or
producer." Supplementary Report, at 67. The Supplementary Report emphasized that only the "four
special cases specifically mentioned" could qualify as works made for hire; "[o]ther works made on
special order or commission would not come within the definition." Id. at 67-68. [p*747]

[25] In 1966, the House Committee on the Judiciary endorsed this compromise in the first
legislative report on the revision bills. See H.R.Rep. No. 2237, 89th Cong., 2d Sess., 114, 116
(1966). Retaining the distinction between works by employees and commissioned works, the House
Committee focused instead on

how to draw a statutory line between those works written on special order or commission that
should be considered as works made for hire, and those that should not.
Id. at 115. The House Committee added four other enumerated categories of commissioned works
that could be treated as works for hire: compilations, instructional texts, tests, and atlases. Id. at
116. With the single addition of "answer material for a test," the 1976 Act, as enacted, contained the
same definition of works made for hire as did the 1966 revision bill, and had the same structure and
nearly the same terms as the 1966 bill. [n13] Indeed, much of the language of the 1976 House and
Senate Reports was borrowed from the Reports accompanying the earlier drafts. See, e.g., H.R.Rep.
No. 94-1476, p. 121 (1976); S.Rep. No. 94-473, p. 105 (1975).

[26] Thus, the legislative history of the Act is significant for several reasons. First, the enactment of
the 1965 compromise with only minor modifications demonstrates that Congress intended to
provide two mutually exclusive ways for works to acquire work for hire status: one for employees
and [p*748] the other for independent contractors. Second, the legislative history underscores the
clear import of the statutory language: only enumerated categories of commissioned works may be
accorded work for hire status. The hiring party's right to control the product simply is not
determinative. See Note, The Creative Commissioner: Commissioned Works Under the Copyright
Act of 1976, 62 N.Y.U.L.Rev. 373, 388 (1987). Indeed, importing a test based on a hiring party's
right to control, or actual control of, a product would unravel the "`carefully worked-out
compromise aimed at balancing legitimate interests on both sides.'" H.R.Rep. No. 2237, supra, at
114, quoting Supplemental Report, at 66. [n14]

[27] We do not find convincing petitioners' contrary interpretation of the history of the Act. They
contend that Congress, in enacting the Act, meant to incorporate a line of cases decided under the
1909 Act holding that an employment relationship exists sufficient to give the hiring party
copyright ownership whenever that party has the right to control or supervise the artist's work. See,
e.g., Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 914 (CA2 1974); Picture
Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (CA2), cert. denied, 409 U.S. 997 (1972); Scherr
v. Universal Match Corp., 417 F.2d 497, 500 (CA2 1969), cert. denied, 397 U.S. 936
(1970); Brattleboro Publishing Co. v. Winmill Publishing Corp., 369 F.2d 565, 567-568 (CA2
1966). In support of this position, petitioners note:

Nowhere in the 1976 Act or in the Act's legislative history does Congress state that it intended to
jettison the control standard or otherwise to reject the pre-Act judicial approach to identifying a
[p*749] work for hire employment relationship.

Brief for Petitioners 20, citing Aldon Accessories, 738 F.2d at 552.

[28] We are unpersuaded. Ordinarily, "Congress' silence is just that -- silence." Alaska Airlines, Inc.
v. Brock, 480 U.S. 678, 686 (1987). Petitioners' reliance on legislative silence is particularly
misplaced here, because the text and structure of 101 counsel otherwise. See Bourjaily v. United
States, 483 U.S. 171, 178 (1987); Harrison v. PPG Industries, Inc., 446 U.S. 578, 592
(1980). [n15] Furthermore, the structure of the work for hire provisions was fully developed in 1965,
and the text was agreed upon in essentially final form by 1966. At that time, however, the courts
had applied the work for hire doctrine under the 1909 Act exclusively to traditional employees.
Indeed, it was not until after the 1965 compromise was forged and adopted by Congress [n16] that a
federal court for the first time applied the work for hire doctrine to commissioned works. See, e.g.,
Brattleboro Publishing Co., supra, at 567-568. Congress certainly could not have "jettisoned" a line
of cases that had not yet been decided.

[29] Finally, petitioners' construction of the work for hire provisions would impede Congress'
paramount goal in revising the 1976 Act of enhancing predictability and certainty of copyright
ownership. See H.R.Rep. No. 94-1476, supra, at 129. In a "copyright marketplace," the parties
negotiate with an expectation that one of them will own the copyright in the completed
work. Dumas, 865 F.2d at 1104-1105, [p*750] n. 18. With that expectation, the parties at the outset
can settle on relevant contractual terms, such as the price for the work and the ownership of
reproduction rights.

[30] To the extent that petitioners endorse an actual control test, [n17] CCNV's construction of the
work for hire provisions prevents such planning. Because that test turns on whether the hiring party
has closely monitored the production process, the parties would not know until late in the process,
if not until the work is completed, whether a work will ultimately fall within 101(1). Under
petitioners' approach, therefore, parties would have to predict in advance whether the hiring party
will sufficiently control a given work to make it the author.

If they guess incorrectly, their reliance on "work for hire" or an assignment may give them a
copyright interest that they did not bargain for.

Easter Seal Society, 815 F.2d at 333; accord, Dumas, 865 F.2d at 1103. This understanding of the
work for hire provisions clearly thwarts Congress' goal of ensuring predictability through advance
planning. Moreover, petitioners' interpretation

leaves the door open for hiring parties, who have failed to get a full assignment of copyright rights
from independent contractors falling outside the subdivision (2) guidelines, to unilaterally obtain
work-made-for-hire rights years after the work has been completed as long as they directed or
supervised the work, a standard that is hard not to meet when one is a hiring party.

Hamilton, Commissioned Works as Works Made for Hire Under the 1976 Copyright Act:
Misinterpretation and Injustice, 135 U.Pa.L.Rev. 1281, 1304 (1987).

[31] In sum, we must reject petitioners' argument. Transforming a commissioned work into a work
by an employee on the basis of the hiring party's right to control, or actual control of, the work is
inconsistent with the language, structure, and legislative history of the work for hire provisions. To
[p*751] determine whether a work is for hire under the Act, a court first should ascertain, using
principles of general common law of agency, whether the work was prepared by an employee or an
independent contractor. After making this determination, the court can apply the appropriate
subsection of 101.

[32] We turn, finally, to an application of 101 to Reid's production of "Third World America." In
determining whether a hired party is an employee under the general common law of agency, we
consider the hiring party's right to control the manner and means by which the product is
accomplished. [n18] Among the other factors relevant to this inquiry are the skill required; [n19] the
source of the instrumentalities and tools; [n20] the location of the work; [n21] the duration of the
relationship between the parties; [n22] whether the hiring party has the right to assign additional
projects to the hired party; [n23] the extent of the hired party's discretion over when and how long to
work; [n24] the method of payment; [n25] the hired party's role in hiring and [p*752] paying
assistants; [n26] whether the work is part of the regular business of the hiring party; [n27] whether the
hiring party is in business; [n28] the provision of employee benefits; [n29] and the tax treatment of the
hired party. [n30] See Restatement 220(2) (setting forth a nonexhaustive list of factors relevant to
determining whether a hired party is an employee). [n31] No one of these factors is determinative. See
Ward, 362 U.S. at 400; Hilton Int'l Co. v. NLRB, 690 F.2d 318, 321 (CA2 1982).

[33] Examining the circumstances of this case in light of these factors, we agree with the Court of
Appeals that Reid was not an employee of CCNV, but an independent contractor. 270
U.S.App.D.C. at 35, n. 11, 846 F.2d at 1494, n. 11. True, CCNV members directed enough of Reid's
work to ensure that he produced a sculpture that met their specifications. 652 F.Supp. at 1456. But
the extent of control the hiring party exercises over the details of the product is not dispositive.
Indeed, all the other circumstances weigh heavily against finding an employment relationship. Reid
is a sculptor, a skilled occupation. Reid supplied his own tools. He worked in his own studio in
Baltimore, making daily supervision of his activities from Washington practicably impossible. Reid
was retained for less than two months, a relatively [p*753] short period of time. During and after
this time, CCNV had no right to assign additional projects to Reid. Apart from the deadline for
completing the sculpture, Reid had absolute freedom to decide when and how long to work. CCNV
paid Reid $15,000, a sum dependent on "completion of a specific job, a method by which
independent contractors are often compensated." Holt v. Winpisinger, 258 U.S.App.D.C. 343, 351,
811 F.2d 1532, 1540 (1987). Reid had total discretion in hiring and paying assistants. "Creating
sculptures was hardly `regular business' for CCNV." 270 U.S.App.D.C. at 35, n. 11, 846 F.2d at
1494, n. 11. Indeed, CCNV is not a business at all. Finally, CCNV did not pay payroll or Social
Security taxes, provide any employee benefits, or contribute to unemployment insurance or
workers' compensation funds.

[34] Because Reid was an independent contractor, whether "Third World America" is a work for
hire depends on whether it satisfies the terms of 101(2). This petitioners concede it cannot do.
Thus, CCNV is not the author of "Third World America" by virtue of the work for hire provisions
of the Act. However, as the Court of Appeals made clear, CCNV nevertheless may be a joint author
of the sculpture if, on remand, the District Court determines that CCNV and Reid prepared the
work "with the intention that their contributions be merged into inseparable or interdependent parts
of a unitary whole." 17 U.S.C. 101. [n32] In that case, CCNV and Reid would be co-owners of the
copyright in the work. See 201(a).

[35] For the aforestated reasons, we affirm the judgment of the Court of Appeals for the District of
Columbia Circuit.

[36] It is so ordered.
 United States Court of Appeals,Second Circuit.
Clifford Scott AYMES, Plaintiff-Appellant, v. Jonathan J. BONELLI, doing business as
Island Swimming Sales, Inc., and Island Recreational, Defendants-Appellees.

No.562, Docket 94-7470.

Decided: January 30, 1995
Before: PRATT, ALTIMARI, and JACOBS, Circuit Judges.Clifford Scott Aymes, pro se. Susan E. McHale, New York City
(Thomas A. O'Rourke, Wyatt, Gerber, Burke & Badie, of counsel), for defendant-appellees.
Plaintiff-appellant Clifford Scott Aymes appeals from a judgment entered in the United States District Court for the
Southern District of New York, dismissing his copyright infringement action. Aymes initially filed his complaint in 1985
against defendants-appellees Island Recreation Inc. (Island) and its president Jonathan Bonelli, alleging that they had
infringed his copyright to certain computer programs he had written for Island between 1980 and 1982. The programs,
collectively called CSALIB, were designed to facilitate Island's inventory, record-keeping, and sales efforts in Island's
business of operating a chain of retail stores selling swimming pools and related supplies. Aymes alleged, among other
things, that defendants had violated oral commitments Bonelli made to use CSALIB on only one computer at Island and to
grant Aymes the exclusive right to modify the programs. This is the second time that this matter has come to us for
review, see Aymes v. Bonelli, 980 F.2d 857 (2d Cir.1992), therefore we presume familiarity with the facts and
circumstances of this case.

Following multiple pretrial motions, the district court held a bench trial on the issue of infringement liability on
September 10, 1991. By Memorandum Opinion and Order dated September 24, 1991, the district court dismissed
Aymes's complaint. It found that Bonelli never agreed to limit his right to use the programs in a way that would prohibit
him from using [the programs] for any other corporation he might form or from expanding his data processing capability
by adding a second computer. In addition, the district court found that there never was a contractual commitment by
Bonelli that Island would never in the future use any other programmer to make modifications to the programs.

In any event, the district court held, Island was the rightful owner of the program, under 17 U.S.C. 201(b) (1988),
because Aymes had prepared it in his capacity as an employee of Island. In its Memorandum on Reconsideration dated
November 6, 1991, the district court adhered to its finding that Aymes was an employee whose work belonged to Island.
Lastly, by Memorandum Opinion and Order dated December 18, 1991, the district court awarded Aymes $34,549.13 in
monies due for his work on the program plus interest.

On the first appeal, we reversed the judgment of the district court and remanded for further proceedings. Aymes, 980
F.2d at 865. We held that under Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104
L.Ed.2d 811 (1989), Aymes as a matter of law was an independent contractor, rather than Island's employee. We
therefore found that, as author of the program, Aymes owned the copyright, and we remanded for a determination of
Aymes's infringement claim. We noted, however, that based on the district court's earlier findings, it appeared unlikely
that Aymes would prevail. An additional issue that required consideration on remand was whether Bonelli was a joint
owner of the copyright under 17 U.S.C. 201(a) because of his contribution to its creation.

On remand, the district court again dismissed Aymes's complaint, noting that [a]s the Second Circuit anticipated, having
considered the issues before me, I conclude that Mr. Aymes has not prevailed on his infringement claim. Agreeing with
a finding from the 1988 district court order denying defendants' motion for summary judgment, the district court stated,
[T]he evidence is clear that Mr. Aymes sold the program to Island. The district court also reiterated the findings from
its 1991 post-trial decision. The district court found it unnecessary to reach the issue of whether Island could have used
the program for its subsidiary corporations, because it found that CSALIB had been used only by one corporation and on
one computer. Because of the absence of evidence of any copyright infringement, the district court did not reach the
joint-ownership issue.

On this appeal, Aymes argues principally that he owns the copyright to CSALIB and that any modifications that Island
made to the program, even for its own internal purposes, constituted copyright infringement. We affirm the judgment of
the district court for the reasons discussed below.

DISCUSSION

Aymes contends that the defendants' modifications to CSALIB constituted copyright infringement under 17 U.S.C. 106
because he, as the owner of the copyright to CSALIB, had the exclusive right to prepare derivative works. 17 U.S.C. 106
provides:

Subject to sections 107 through 120, the owner of [a] copyright under this title has the exclusive rights to do and to
authorize any of the following:
(1)to reproduce the copyrighted work in copies or phonorecords;

(2)to prepare derivative works based upon the copyrighted work;

17 U.S.C. 106(1) & (2) (1977).

In this case, Island does not dispute that it altered CSALIB and thereby created a derivative work from the original
CSALIB program that Aymes developed for Island. See 17 U.S.C. 101 (defining derivative work as a work based
upon one or more preexisting works, including any form in which a work may be recast, transformed, or adapted).
Unless excused by another statutory provision, Island's modification would constitute an infringement of Aymes's
copyright. See Gilliam v. American Broadcasting Cos., 538 F.2d 14, 21 (2d Cir.1976) (unauthorized editing of the
underlying work, if proven, would constitute an infringement of the copyright); 17 U.S.C. 106 (owner of copyright has
exclusive right to prepare derivative works).

There is another statutory provision, however, 117, which provides:

Limitations on exclusive rights: Computer programs

Notwithstanding the provisions of section 106, it is not an infringement for the owner of a copy of a computer program to
make or authorize the making of another copy or adaption of that computer program provided:

(1)that such a new copy or adaption is created as an essential step in the utilization of the computer program in
conjunction with a machine and that it is used in no other manner, or

(2)that such new copy or adaptation is for archival purposes only and that all archival copies are destroyed in the event
that continued possession of the computer program should cease to be rightful.

Any exact copies prepared in accordance with the provisions of this section may be leased, sold, or otherwise transferred,
along with the copy from which such copies were prepared, only as part of the lease, sale, or other transfer of all rights in
the program. Adaptations so prepared may be transferred only with the authorization of the copyright owner.
(Amended December 12, 1980, Public Law 96-517, 10(b), 94 Stat. 3028).

17 U.S.C. 117 (emphasis added).

Defendants contend their rights are determined by this section, rather than 106, because (1) they are the owner[s] of
a copy of a computer program and (2) they made modifications as an essential step in the utilization of CSALIB. As to
the defendants' first claim, as the district court noted early in this litigation, the plaintiff cannot realistically dispute the
fact that he sold defendants the computer program and that defendants are therefore the rightful owners of the program.
True, the district court erroneously viewed Aymes as an employee; but even as an independent contractor, Aymes was
paid by Island to design a program specifically for Island's use, and for those efforts he earned in excess of $70,000.
Island, therefore, had a right to use the program for its own business purposes.

As to Aymes's second contention, an owner of a copy of a computer program is authorized to make a new copy or
adaption [if it] is created as an essential step in the utilization of the computer program and it is used in no other
manner. 17 U.S.C. 117(1). Section 117 was implemented to follow the recommendations of the National Commission
on New Technological Uses of Copyrighted Works [the CONTU] with respect to clarifying the law of copyright ownership
of computer software. H.R.Rep. No. 1307, 96th Cong., 2d Sess., Pt. I, at 23 (1980), reprinted in 1980 U.S.C.C.A.N. 6460,
6482; Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 260 (5th Cir.1988); see also Computer Assocs. Int'l, Inc. v. Altai,
Inc., 982 F.2d 693, 703 (2d Cir.1992) (Congress adopted CONTU's suggestions and amended the Copyright Act).

The CONTU issued a final report, (Contu Report), Final Report of the National Commission on New Technological Uses
of Copyrighted Works 30 (1978), which recommended that congress amend the copyright law so that a rightful possessor
of a copy of a computer program would be able to make certain copies and adaptations of the program without infringing
the program's copyright. The Contu Report states that persons in rightful possession of copies of programs [should] be
able to use them freely without fear of exposure to copyright liability. Contu Report at 31. Buyers should be able to
adapt a purchased program for use on the buyer's computer because without modifications, the program may work
improperly, if at all. No buyer would pay for a program without such a right. Id. at 32.

Bonelli and Island, as rightful owners of a copy of CSALIB, did not infringe upon Aymes's copyright, because the changes
made to CSALIB were necessary measures in their continuing use of the software in operating their business. 17 U.S.C.
117(1) (1992). The modifications here fall easily within the contemplation of Contu:
Because of a lack of complete standardization among programming languages and hardware in the computer industry, one
who rightfully acquires a copy of a program frequently cannot use it without adapting it to that limited extent which will
allow its use in the possessor's computer. The copyright law, which grants to copyright proprietors the exclusive right to
prepare translations, transformations, and adaptations of their work, should no more prevent such use than it should
prevent rightful possessors from loading programs into their computers. Thus, a right to make those changes necessary
to enable the use for which it was both sold and purchased should be provided.

Contu Report at 32.

According to the Contu Report, copyright laws should reflect the fact that transactions involving computer programs are
entered into with full awareness that users will modify their copies to suit their own needs. Foresight Resources Corp. v.
Pfortmiller, 719 F.Supp. 1006, 1009 (D.Kan.1989) (quoting Contu Report). This right of adaption includes the right to
add features to the program that were not present at the time of rightful acquisition, id., and was intended to apply to
modifications for internal use, as long as the adapted program is not distributed in an unauthorized manner. See id. at
1009-10; Apple Computer, Inc. v. Formula Int'l, Inc., 594 F.Supp. 617, 621 (C.D.Cal.1984). The district court found that
Island used the program for internal purposes only and did not distribute the program to its subsidiaries.

Nor does it appear that the modifications to the program were for any purpose other than Island's internal business needs.
The original program made provisions for late charges, and Island did alter CSALIB to keep it current from year to year
and to maintain the viability of the original software when Island upgraded its computer to accommodate successive
generations of IBM systems. In this connection, the Contu Report also comments:

The conversion of a program from one higher-level language to another to facilitate use would fall within this right [of
adaption], as would the right to add features to the program that were not present at the time of rightful acquisition
Again, it is likely that many transactions involving copies of programs are entered into with full awareness that users will
modify their copies to suit their own needs, and this should be reflected in the law Should proprietors feel strongly that
they do not want rightful possessors of copies of their programs to prepare such adaptations, they could, of course, make
such desires a contractual matter.

Contu Report at 13-14 (emphasis added) quoted in, Foresight Resources, 719 F.Supp. at 1009.

Although at the time the parties entered into an agreement for the creation of CSALIB they orally agreed that the program
would be used on one Island computer, the district court found that the oral agreement had not been breached.
Moreover, both parties knew that modifications would be essential for the continued functioning of the program on an
upgraded computer system, and that, in fact, the system was continually being upgraded in order to keep up with Island's
growth. Until this lawsuit Aymes never sought to prohibit others from making modifications to the programs, although
for some time he had been aware that Island had hired another programmer to convert and modify CSALIB. Indeed,
Aymes was present and raised no objection while some of the modifications were being made by Island's employees.

Finally, there is no merit to Aymes's suggestion that defendants infringed his copyright because they used the programs in
an unauthorized manner and for an external purpose. Foresight Resources, 719 F.Supp. at 1009; Apple Computer, 594
F.Supp. at 621. The district court found that Island used CSALIB for internal business purposes only and did not
distribute the program to its subsidiaries. These findings are not clearly erroneous. Nor is there evidence that the
modified program was marketed, manufactured, distributed, transferred, or used for any purpose other than Island's own
internal business needs. See Id. (the copy authorized by Section 117 must be made only for the owner-user's internal
use).

We have considered Aymes's other contentions and find them to be similarly without merit.

CONCLUSION

In sum, defendants properly modified their copy of CSALIB to suit their own needs; Island's adaptations were essential to
allow use of the program for the very purpose for which it was purchased. Island used CSALIB on only one computer for
one corporation and defendants did not infringe Aymes's copyright.

The judgment of the district court is therefore affirmed.

 921 F. Supp. 793 (1995)

Charles ROESLIN, III, Plaintiff,

v.
DISTRICT OF COLUMBIA, Defendant.
Civil Action No. 92-1493 (HHG).

United States District Court, District of Columbia.

April 7, 1995.

*794 *795 Joseph Vincent Colaianni, Sr., Melissa Lanni Robertson, Peter D. Vogl,
Pennie & Edmonds, Washington, DC, Brian James Hundertmark, I, Roberts &
Hundertmark, Chevy Chase, MD, for plaintiff.

Jack M. Simmons, III, Office of Corporation Counsel, Washington, DC, for

defendant.

OPINION

HAROLD H. GREENE, District Judge.

In this action, plaintiff, an employee of the Department of Employment Services

("D.O.E.S.") of the District of Columbia, claims copyright infringement against the
District for its use and copying of a computer software program (the "DC-790"
system) that plaintiff developed. The matter was tried, and it is now ripe for these
findings of fact and conclusions of law.

Findings of Fact

D.O.E.S. is responsible for collecting and tabulating employment statistics for the
District of Columbia and the D.C. metropolitan area. It collects the statistics by
mailing the Current Employment Service ("CES") survey to area employers, and
tabulating their responses. D.O.E.S. transmits these statistics and estimates
based thereon to the Federal Bureau of Labor Statistics ("BLS") for its use in
computing national labor statistics.

Plaintiff was hired by D.O.E.S. in November, 1986 for the position of a Labor
Economist for a four year term, and began work in the Labor Management
Information Section of D.O.E.S. He received a salary from the District and full
benefits. At the time plaintiff was hired, he had no computer programming skills,
nor was his supervisor, Mr. Groner, aware of whether plaintiff had any computer
programming skills.

As a Labor Economist, plaintiff was charged with three tasks: (1) to improve
employer response rate to the CES survey; (2) to expand the CES sample size; and
(3) to develop industry and occupational employment projections. His job
description listed his duties as: (1) planning and carrying out projects for
collecting detailed economic data; (2) evaluating and adapting necessary
statistical methods for the preparation of data; (3) planning, organizing and
operating programs (i.e. projects) for the collection, verification and presentation
of data; (4) selecting the most appropriate statistical methods; (5) preparing
estimates of employment and unemployment; and (6) preparing various reports
and studies. He had discretion in determining how to carry out these duties.

When plaintiff began working at D.O.E.S., employees manually collected the

information from returned CES surveys and recorded the information on office
record cards. A data processing staff would enter this data into the mainframe
system. The estimates derived from this data were computed manually with the
aid of a computer. The District anticipated the future development of the
Automated Current Employment Statistics ("ACES") mainframe system.

Prior to developing the DC-790 system, plaintiff did use a computer to assist in
the carrying out of his duties, although he did not do any computer programming.
[1]
Plaintiff also assisted in the "automation" of the office, that is, in transferring
some of the work that was done manually to already existing computer software
applications. This task also did not involve any computer programming.

Plaintiff was motivated to create the DC-790 system in June 1988 when he
attended a CES conference. Upon returning from the conference, plaintiff
informed his supervisor, Mr. Groner, that he believed a personal computer ("PC")
based system could be created for the District's CES surveys. Plaintiff testified
that after checking with BLS, Mr. Groner informed plaintiff that creation of
a *796 PC-based program was neither feasible nor desirable, and told plaintiff not
to pursue the idea because he would be too busy with his other job duties, and
because D.O.E.S. had already decided to eventually implement ACES, the
mainframe system.[2] Nonetheless, plaintiff informed Mr. Groner that he would
create a PC-based system on his own time. Plaintiff testified that his motivation
in creating the program was to prove that it could be done and to develop job
opportunities for himself. Mr. Groner told the plaintiff that the program would be
"in the public domain," which plaintiff took to mean that the system would not be
owned by anybody. Mr. Groner actually believed that the District would own the
program; he testified that he thought that the phrase "in the public domain"
meant that the District would own the program.
In August 1988, plaintiff purchased a personal computer with his own funds. In
October 1988, he purchased software using his own funds. Plaintiff taught himself
how to program computers using books that he purchased with his own funds.
[3]
He spent approximately 3,000 hours creating the various modules necessary to
complete the DC-790 program, and creating enhancements to the system. He
completed the final module in January, 1991, although most of the modules were
completed by 1990. Plaintiff did all of this work at home. He also tested each
module at home, using hypothetical data. Nobody at D.O.E.S. directed plaintiff to
create the DC-790 system, supervised his doing so, or assisted him in doing so.
He was not offered compensation for the creation of the system.

After testing each module at home, plaintiff brought each module into work to
test with actual data. Some of the testing and debugging of various modules was
done during office hours. Once each module worked properly, plaintiff
incorporated the modules into the PC system operating at D.O.E.S. Shortly after
the DC-790 system became operational, D.O.E.S. personnel ceased using office
record cards. Plaintiff also created an operating manual for the DC-790 system in
May 1990 in response to a request by an employee of the BLS Regional Office.
Plaintiff received positive performance appraisals based, in part, on his
development of the DC-790 system. Prior to April 1991, plaintiff attempted to
promote the DC-790 system to BLS, and demonstrated the system to some of its
personnel during office hours.

Throughout this period, according to plaintiff's testimony, he relied on Mr.

Groner's statement to him that nobody would own the DC-790 system and that it
would be in the public domain. Plaintiff stated that he first learned that the
District asserted a proprietary interest in the program in April of 1991. At that
time, he was provided with a copy of a letter from the District to the State of
Maine, in which the District stated that it had a proprietary interest in the
program. Defendant does not dispute that this is when plaintiff first learned that
defendant asserted a proprietary interest.

When plaintiff learned that the District claimed a proprietary interest in the DC-
790 system, he confronted Mr. Groner. He told Mr. Groner that if anyone owned the
system (rather than it being in the public domain), then he did, as the author of
the program. Plaintiff and Mr. Groner met to discuss the issue, at which time
plaintiff requested recognition by the District that he had independent ownership
of the program, in exchange for which the District would be allowed free use and
distribution of the software. He also requested a promotion.

*797 In June of 1991, plaintiff placed a copyright notice on the initial screen of
the DC-790 system. In June, through counsel, he notified the District's
Corporation Counsel and the Mayor's office of his claim of copyright ownership.
He also demanded that the District stop using the system. In December of that
year, he filed for and received Copyright Registration No. TXu 514 262 for the DC-
790 system. The District never filed an application to register a copyright for the
system.

Despite plaintiff's notice of copyright ownership, employees of the District

continued using the system. Mr. Groner never instructed his employees to cease
using the system.

Plaintiff also gave notice that he would make no further modifications to the
program if these modifications required programming. From November of 1992
until June or July of 1993, plaintiff was temporarily reassigned to the District's
Office of Management, Information and Data Systems. During this time, plaintiff
was working under a job description of computer programmer analyst. Plaintiff
did not work on the DC-790 system while placed on this assignment. While the DC-
790 system was rendered inoperable during this time period, due to an employee
error, plaintiff was not asked to assist in correcting the problem.

In November of 1991, the District requested installation of the ACES system. The
installation of this system was completed in January 1993. Plaintiff assisted the
District somewhat in the conversion from the DC-790 system to the ACES system.
He would not participate to the extent that participation would involve his
copyright. There was some delay in implementing the ACES system, but according
to plaintiff's testimony, some of which was due in no part to plaintiff's behavior,
and some of which was due to a combination of plaintiff's standing by his
copyright claim and defendant's delay in finding alternate sources of the
information it sought from plaintiff.

Based on a study conducted by a D.O.E.S. employee, Ms. Moore, the ACES system
costs in excess of $83,000 a year. $59,000 goes to programmers' salaries and
$24,000 is attributable to mainframe processing charges. Ms. Moore testified that
the DC-790 system did not incur the processing charges or the programmers'
salaries.

Conclusions of Law

The central issue in this case is whether plaintiff, as the author of the DC-790
system, or defendant, as plaintiff's employer, is the owner of the copyright on the
DC-790 system. Generally, the author of a work is the owner of a copyright. 17
U.S.C. 201(a). However, in the case of a "work made for hire," the owner of the
copyright is the entity for whom the work was prepared. Id. at 201(b). The
copyright statute defines a work made for hire as "a work prepared by an
employee within the scope of his or her employment." Id. at 101. Because
plaintiff has received a copyright registration for the DC-790 system, the
presumption is that plaintiff owns the copyright. 17 U.S.C. 410(c). The burden is
thus on the defendant to establish that the system is a work made for hire. See,
e.g.,Avtec Systems Inc. v. Peiffer, 21 F.3d 568, 571 (4th Cir. 1994); Design v. Lauren
Knitwear Corp., 782 F. Supp. 824, 829 n. 11 (S.D.N.Y.1991).

The Supreme Court has held that to determine whether an individual was an
employee, and whether he created a work within the scope of his employment,
courts should look to the general common law of agency. Community for Creative
Non-Violence v. Reid, 490 U.S. 730, 740, 109 S. Ct. 2166, 2172-73, 104 L. Ed. 2d 811
(1989). There is no dispute in this case that plaintiff was an employee of
defendant. The question is whether he created the DC-790 system within the
scope of his employment.

The Restatement (Second) of Agency, which the Supreme Court cited

in Reid, states that:

(1) Conduct of a servant is within the scope of employment if, but only if:

(a) it is within the kind he is employed to perform;

(b) it occurs substantially within the authorized time and space limits; [and]

*798 (c) it is actuated, at least in part, by a purpose to serve the master.

Restatement at 228. The employer must demonstrate that these three of these
factors exist to prove that the work is a work made for hire. See Avtec
Systems, 21 F.3d at 571-72.

A. With regard to the first prong, the Court finds that developing computer
software is not the kind of work plaintiff was employed to perform. Plaintiff was
hired as a labor economist, not as a computer programmer. There is no reference
in his job description to computer programming; nor was his supervisor aware of
whether plaintiff had any programming skills when he was hired. Plaintiff was
hired to improve certain aspects of the CES survey and develop projections based
on that survey. He was not hired to create a computer program that would assist
the entire office and receive, process, and transmit the survey results.

Defendant makes much of the fact that plaintiff used computers at work, and that
defendant allowed plaintiff, during work hours, to learn how to use computers.
This, however, does not prove that computer programming was part of plaintiff's
job duties or necessary to performing his job duties. Many people use computers
in the work place, including plaintiff's coworkers, but do not program computers.
The two skills are quite different while many people operate computers, few have
the technical ability or training necessary to program them.

To be sure, work that is incidental to the conduct authorized by the employer,

even if it is not central to the employee's job duties, also falls within the scope of
employment. Restatement at 229. To determine whether computer programming
was incidental to plaintiff's employment, a court may consider such factors as
whether this was the type of activity commonly done by labor economists, and
whether it was likely that plaintiff would engage in such an activity. Id. The Court
finds that while developing the DC-790 system did help the functioning of the
work place, it was not the type of activity in which plaintiff would be reasonable
expected to engage.

Moreover, it is disingenuous for the District now to claim that developing the DC-
790 system was within the scope of plaintiff's job duties. Plaintiff originally
approached Mr. Groner about writing a computer program that would perform the
functions of the system. Plaintiff testifies, very credibly, that Mr. Groner
discouraged him from doing so, stating that it would detract from his ability to
perform his other job duties and that D.O.E.S. had already decided to implement
the ACES system. It is unfair for the District to now claim that an activity it
discouraged developing the system was within the scope of plaintiff's
employment.

B. Second, the Court must determine whether the development of the system
"occurred substantially within the authorized time and space limits." The Court
finds that it did not. Plaintiff credibly testified that he spent 3,000 hours outside
of normal working hours creating the modules of the DC-790 system. He did this
at home using a computer he purchased with his own funds. It is true that
plaintiff tested each module at work. It is also true that once each module was
operational, it was used in the work place. Nonetheless, the substantial amount
of time plaintiff spent creating the DC-790 system, which is what is at issue in
this case, was done on his own time outside of the office. Accordingly, the system
was not developed within the authorized time and space limits.

C. Finally, the Court will address whether plaintiff was motivated to create the
system, at least in part, by a purpose to serve the master. Plaintiff testified that
he created the program for two reasons: (1) to create job opportunities for
himself; and (2) to prove it could be done. The Court finds that plaintiff was
motivated by each of these purposes. To be sure, the DC-790 system benefitted
his employer, and the Court could fairly infer that part of plaintiff's motivation was
to achieve this result. However, the Court finds that plaintiff was primarily
motivated by self-fulfilling purposes. Additionally, it finds, as stated above, that it
is disingenuous for the District to initially have stated that the plaintiff could not
create the *799 system, and now assert that plaintiff did so for the District's
benefit.[4]
On the whole, then, the Court finds that defendant has not established that the
DC-790 system was a work made for hire. The program was not the type of work
plaintiff was employed to perform, nor was it incidental to his job duties.
Moreover, the substantial proportion of the creating of the program took place
outside the office during non-office hours. Finally, the plaintiff was primarily
motivated to create the system for his own benefit.

II

To recover in this case, plaintiff must also demonstrate that the District infringed
his copyright. There is not much dispute on this issue. Plaintiff must establish
that the defendant copied "constituent elements of the work that are original." 17
U.S.C. 501(a). The placement of a copyrighted program into a computer, or the
loading of a copyrighted program into a computer (which occurs every time an
employee uses the program), constitutes "copying" the program for purposes of
the Copyright Act. See MAI Systems Corp. v. Peak Computer Inc., 991 F.2d 511,
519 (9th Cir.1993), cert. dismissed, ___ U.S. ___, 114 S. Ct. 671, 126 L. Ed. 2d 640
(1994); Vault Corp. v. Quaid Software Ltd., 847 F.2d 255, 260 (5th Cir. 1988). Thus,
every time a D.O.E.S. employee used the DC-790 system, which the employees did
up until January, 1993, the District infringed plaintiff's copyright.

III

The District asserts a number of defenses that would defeat plaintiff's claim. It
claims that (1) plaintiff is estopped from asserting his copyright, (2) that he
abandoned his copyright, (3) that his actions constitute contributory infringement
of his copyright, (4) that he granted a non-exclusive license to use the DC-790
system. These defenses essentially rely on the theory that plaintiff should not be
able to assert a copyright when he did not do so prior to April, 1991 and in fact
introduced the DC-790 system into the office. However, plaintiff's failure to assert
a proprietary interest in the system prior to April 1991 was due to Mr. Groner's
representation that plaintiff would not have a proprietary interest. As soon as
plaintiff learned that the District was representing to others that it owned the DC-
790 system, he immediately stated his proprietary interest and undertook the
necessary steps, such as applying for a copyright, to verify that position. Plaintiff
reinforced this position by insisting that he would make no modifications on the
system until the District admitted that he owned the system. Accordingly, any
defense based on plaintiff's failure to state a proprietary interest in the DC-790
system, or his acquiescence to its being used in the office, must fail.[5]
IV

Upon finding that plaintiff had a copyright in the DC-790 system, and that the
defendant infringed that copyright, the Court must assess damages.

First, plaintiff requests that the Court enjoin the District's further use of the DC-
790 system pursuant to 17 U.S.C. 502(a). The Court will do so.

Second, plaintiff requests damages in the amount of "profits of the infringer that
are attributable to the infringement" pursuant to 17 U.S.C. 504(b). Costs that the
defendant did not incur because it infringed a copyright are considered profits for
this purpose. See, e.g., Deltak Inc. v. Advanced Systems, 767 F.2d 357, 361-62 (7th
Cir.1985); Nucor Corp. v. Tennessee Forging Steel Service, Inc, 513 F.2d 151, 152-
53 (8th *800 Cir.1975). In this case, use of the DC-790 system prevented the
District from incurring the cost of the ACES system, which was estimated to be
$83,000 a year. The defendant does not dispute that this figure accurately
represents the costs associated with the ACES system. Defendant does contend
that plaintiff fails to discount for the "imputed costs of the DC-790 system;"
however it offers no alternative theory of calculating damages. Plaintiff is thus
entitled to recover this cost for the period from which he notified the District that
he believed he owned the copyright, April of 1991, until the District ceased using
the DC-790 system in December 1992. This amounts to $145,250. [6]

Defendant contends that plaintiff is not entitled to the full amount of damages
because he failed to mitigate his damages. Essentially, defendant claims that
plaintiff contributed to the delay in implementing the ACES system, and thus
contributed to the District's failure to stop using the DC-790 system. This
argument is unpersuasive. First, and most persuasively, plaintiff offered
defendant a royalty-free license to use the system if it would admit that he was
the program's owner. The District turned down this offer. Second, the evidence
showed that plaintiff assisted, to a certain degree, in implementing the ACES
system; he did not assist only to the extent that defendant requested him to do
something that he believed was covered by his copyright. Thus, plaintiff did not
fail to mitigate his damages and is entitled to the full $145,250.

The final issue is whether plaintiff is entitled to attorneys' fees and costs. The
Copyright Act provides that "the court in its discretion may allow the recovery of
full costs.... [T]he court may also award a reasonable attorney's fee to the
prevailing party." 17 U.S.C. 505. In Fogerty v. Fantasy Inc., 510 U.S. 517, 114 S.
Ct. 1023, 127 L. Ed. 2d 455 (1994), the Supreme Court found that this provision
does not allow for the awarding of attorney's fees as a matter of course. Id. at ___,
114 S. Ct. at 1033. On the other hand, the plaintiff need not prove that defendant
acted in bad faith. Id. Rather, attorney's fees are to be awarded in the court's
discretion; the court may take into account such factors as "frivolousness,
motivation, objective unreasonableness (both in the factual and legal components
of the case) and the need in particular circumstances to advance considerations
of compensation and deterrence." Id. at ___ n. 19, 114 S. Ct. at 1033 n.
19, quoting Lieb v. Topstone Industries, 788 F.2d 151, 156 (3rd Cir.1986). Plaintiff
cursorily contends that he is entitled to attorney's fees because defendant acted
in bad faith when it "deliberately misled" him into thinking the DC-790 system was
in the public domain. He provides no further argument on the issue; defendant
does not even address the issue.

The Court finds that the award of attorney's fees is not appropriate in this case.
There was a genuine dispute as to whether plaintiff or defendant was the owner
of the copyright. There was evidence supporting each side's contention. The
defendant did not act unreasonably in defending this case; it had a colorable
claim, albeit one that the Court ultimately rejected, that the DC-790 system was
created in the scope of plaintiff's employment.[7]

VI

For the reasons stated, the Court finds for the plaintiff. An Order is being issued
contemporaneously herewith.