Supreme Court Denies Cert in Copyright and Reverse Passing Off Case

December 13, 2004. The Supreme Court denied certiorari, without opinion, in Silverstein v. Penguin Putnam, a compilation copyright and reverse passing off case. See, Order List [6 pages in PDF] at page 5. This lets stand the opinion [PDF] of the Second Circuit, which reversed a summary judgment for the author of a compilation of old poems. The case now goes back to the District Court for trial. See also, Petition for Writ of Certiorari [40 pages in PDF] of Silverstein.

Background. Dorothy Parker was a poet, theater critic, book reviewer, and screenplay writer who was active in New York City's literary scene in the 1920s and 1930s. She is best know for her cynical humor, such as her quip about the Yale University prom. She wrote for magazines, such as Vanity Fair, The New Yorker, and Life. She also collected and published three volumes of poetry, Enough Rope (1926), Sunset Gun (1928), and Death and Taxes (1931).

The poems of these three collections have been continuously in print, by Penquin, since 1944 in one volume, The Portable Dorothy Parker [Amazon].

However, she did not collect and publish all of her poetry. Stuart Silverstein, the plaintiff in this litigation, collected 122 of her poems that had not been published in any of her three volumes of poetry. He also wrote footnotes. Scribner published his compilation in one volume titled Not Much Fun: The Lost Poems of Dorothy Parker [Amazon]. Amazon's reviewers praise the book, and Silverstein's footnotes.

Scribner obtained some commercial success with its sale of Not Much Fun. Then, Penquin published, without authorization from Silverstein or Scribner, a book titled Dorothy Parker: Complete Poems, which cut and pasted the poems that Silverstein had collected.

The Court of Appeals gave this description of Penquin's actions. "This compilation re-published her three existing collections and added at the end a section called ``Poems Uncollected by Parker.´´ The end section contained 121 of the 122 poems printed in Silverstein's book, ordered chronologically rather than in Silverstein’s more subjective arrangement. However, Penguin concedes that the editor who prepared that section photocopied Not Much Fun, cut the poems apart with scissors, and pasted them into the Penguin manuscript chronologically. Complete Poems does not reference or acknowledge Silverstein or Not Much Fun." (Footnote omitted.)

Neither of the parties to this litigation claim authorship of any of the underlying poems. Parker wrote them. Moreover, none of the parties claim a copyright interest in any of the poems. Silverstein claims a copyright interest in his compilation.

District Court. Silverstein filed a complaint in U.S. District Court (SDNY) against Penguin Putnam alleging copyright infringement, violation of Section 43(a) of the Lanham Act for reverse passing off, and violation of the laws of the state of New York regarding immoral trade practices and unfair competition.

The District Court, Judge John Keenan presiding, granted Silvertein's motion for summary judgment on the copyright infringement claim, and permanently enjoined Penquin from selling its book, Dorothy Parker: Complete Poems. The District Court held that Silverstein's compilation involved sufficient creativity to make it an original work of authorship.

The District Court also granted Silverstein summary judgment on his Lanham Act claim. It held that Penguin's failure to credit Silverstein constituted a willful false designation of origin. The District Court also found that Silverstein's state law claims were not preempted by federal copyright law, and granted summary judgment for Silverstein. Penguin appealed.

Appeals Court. The Court of Appeals reversed and remanded.

It wrote that "compilations of fact may be copyrightable even though facts themselves are not protected", citing the Supreme Court's 1991 opinion in Feist Publications v. Rural Telephone Service Co., 499 U.S. 340.

However, the Appeals Court added, quoting from Feist, that "Because ``the sine qua non of copyright is originality,´´ a compilation must possess ``at least some minimal degree of creativity´´ to warrant copyright protection." It reasoned that Silverstein was not entitled to summary judgment on the originality issue. That is, it concluded that Parker wrote the entire set of her poetry, Parker selected which poems to collect and published, and therefore, Parker selected the set of unpublished poems. Silverstein did not compile collection; Parker did. Hence, there is a triable issue of fact.

The Court's analysis faced several obstacles. For example, Silverstein had to exercise judgment as to which works were in fact authored by Parker, and then, which of these works, or parts thereof, constitute poetry, as opposed to prose or some other genre. The Court went to great length to explain these inputs as insignificant. The Appeals Court held that there are material issues in dispute, and that summary judgment was therefore inappropriate. It vacated the injunction, reversed the summary judgment and remanded to the District Court.

The Appeals Court opinion also reversed the District Court on the Lanham Act and state claims, but without analysis independent of its copyright analysis.

The case thus returns to the District Court on remand. Hypothetically, Silverstein could still prevail, after further summary judgment motions, or after trial, on any or all of his claims. However, the Appeals Court's opinion diminishes the likelihood that he will prevail on the copyright issues.

Mark Rabinowitz of the law firm of Neal Gerber & Eisenberg represents Silverstein. He spoke with TLJ. He said that "it seemed clear ... that the Feist minimal level of originality had clearly been met."

The Court of Appeals tried to impose a higher threshhold." He added, that "we think that Judge Keenan will continue to see it that way."

Reverse Passing Off and Dastar v. Fox. On June 2, 2003, the Supreme Court issued an its opinion [18 pages in PDF], in Dastar v. Fox, another Lanham Act reverse passing off case. However, that opinion was issued after the District Court's opinion in the present case. See also, story titled "Supreme Court Reverses in Dastar v. Fox" in TLJ Daily E-Mail Alert No. 672, June 3, 2003.

Passing off occurs when a producer misrepresents his own goods or services as someone else's. Reverse passing off occurs when a producer misrepresents someone else's goods or services as his own. Both can be actionable under the Lanham Act, which makes actionable not only the misleading use of marks, but also the false designation of origin of goods.

Section 43(a) of the Lanham Act, which is codified at 15 U.S.C. § 1125(a), provides, in part, that "Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act."

Justice Scalia, writing for the Supreme Court, expressed scepticism about using one form of intellectual property protection to protect another. He wrote that § 43(a) "prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill", but "The words of the Lanham Act should not be stretched to cover matters that are typically of no consequence to purchasers."

Moreover, while the Dastar case involved movies and video, Scalia wrote that the analysis should be the same for any "communicative product", including a book.

Silverstein has argued that the Dastar case is distinguishable.

This case is Stuart Silverstein v. Penguin Putnam, Inc., Sup. Ct. No. 04-618, on petition for writ of certiorari to the U.S. Court of Appeals for the 2nd Circuit. The Appeals Court case is No. 03-7363, Judges Dennis Jacobs, Ralph Winter, and Chester Straub presiding. The U.S. District Court for the Southern District of New York case is No. 01 Civ. 309, Judge Keenan presiding.