155 F.3d 140 (2nd Cir. 1998), 98-7135, Acuff-Rose Music, Inc. v. Jostens, Inc.

Docket Nº:Docket No. 98-7135.
Citation:155 F.3d 140
Party Name:ACUFF-ROSE MUSIC, INC., Plaintiff-Appellant, v. JOSTENS, INC., Defendant-Appellee.
Case Date:September 04, 1998
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 140

155 F.3d 140 (2nd Cir. 1998)

ACUFF-ROSE MUSIC, INC., Plaintiff-Appellant,


JOSTENS, INC., Defendant-Appellee.

Docket No. 98-7135.

United States Court of Appeals, Second Circuit

September 4, 1998

        Argued Aug. 13, 1998.

Page 141

        Robert C. Osterberg, Abelman, Frayne & Schwab, New York, New York, for Plaintiff-Appellant.

        Carole L. Fern, Berlack, Israel & Lieberman, New York, New York (David C. Forsberg & Karna A. Berg, Briggs & Morgan, St. Paul, Minnesota, on the brief), for Defendant-Appellee.

        Before: CALABRESI, CABRANES, and STRAUB, Circuit Judges.

        CALABRESI, Circuit Judge:

        Plaintiff-Appellant Acuff-Rose Music Inc. ("Acuff-Rose") appeals from a judgment of the United States District Court for the Southern District of New York (Denny Chin, Judge ) dismissing Acuff-Rose's copyright infringement suit against Defendant-Appellee Jostens, Inc. ("Jostens"). The district court held that the phrase at issue, which Jostens copied from a song to which Acuff-Rose held the copyright, lacked the requisite originality to be protected by copyright law. See Acuff-Rose Music, Inc. v. Jostens, Inc., 988 F.Supp. 289 (S.D.N.Y.1997). We affirm.


        Acuff-Rose, a music publishing company, owns the copyright to a country music song, You've Got to Stand for Something, that repeatedly features the lyrics, "You've got to stand for something or you'll fall for anything." Country singer Aaron Tippin recorded the song in 1990. You've Got to Stand for Something peaked in popularity in February 1991, when it was the fifth-best-selling country music song in the United States. Although the initial copyright for the song listed Tippin and Buddy Brock as the only authors of the lyrics, in 1996 Acuff-Rose amended its copyright to list Brock's father, William Brock, as an additional author. According to Acuff-Rose (and William Brock), William Brock independently created the sentence, "You've got to stand for something, or you'll fall for anything."

        In December 1992, Jostens, a custom ring manufacturer, launched a nationwide advertising campaign for its school class rings. The campaign prominently featured the slogan "If you don't stand for something, you'll fall for anything." Sometimes the slogan was preceded by the introduction, "The song says it best."

        In September 1994, Acuff-Rose sent a letter to Jostens demanding that it cease using the phrase in its advertising. Jostens refused, claiming that the slogan was "noncopyrightable."

        Acuff-Rose subsequently brought suit in federal district court, alleging that Jostens had infringed Acuff-Rose's copyright. At the close of discovery, Acuff-Rose and Jostens both moved for summary judgment. During oral argument on the motions, the district court voiced its opinion that triable issues of fact, in particular the issue of whether Jostens copied the lyric lines from the Acuff-Rose song, precluded summary judgment. When both parties insisted, instead, that there was no need for a trial and that the case could be decided based on the papers that had been submitted, the district judge agreed to "go ahead and in essence conduct a trial on the record that's before me."

Page 142

        Finding as a matter of fact (1) that Jostens had copied the lyrics from the Acuff-Rose song, see Acuff-Rose Music, 988 F.Supp. at 294; but (2) that the lyrics were not original and therefore were not protected by copyright, see id. at 296, the district court decided in favor of Jostens. On appeal, Acuff-Rose contests the district court's decision that the lyrics are not original and argues that the district court improperly resolved factual issues at summary judgment.


  1. Resolution by Summary Bench Trial

            Before considering the substantive issue of copyright law involved in this appeal, we address the district court's decision to resolve this case by a summary bench trial. 1

            At oral argument on Acuff-Rose's and Jostens' summary judgment motions, the court expressed its belief that the question of whether Jostens copied the lyric lines from Acuff-Rose's song was "a fair issue for trial." But both parties maintained that there was no need for a trial and that the case should be decided without one. When the court then asked whether "the parties agree that I should go ahead and in essence conduct a trial on the record that's before me," Acuff-Rose's counsel responded, "I see no issue for trial at all in the record on any issue." At the end of the hearing, the court again returned to the procedural issue. It expressly stated that it did not want the parties to change their minds later and asked them to agree "that what [you] want is for me ... based on this record to draw the inferences, to make findings of fact and conclusions of law in lieu of taking live testimony." To this, Acuff-Rose's counsel replied, "That is plaintiff's position," and Jostens' lawyer added, "It's defendant's position, your Honor."

            Subsequently, in its decision for Jostens, the district court expressly stated that it was deciding the case under Rule 52(a), "on the record submitted on the summary judgment motions, without a formal trial." See Acuff-Rose Music, 988 F.Supp. at 290. The order of judgment that the court issued five days later, however, referred only to the parties' summary judgment motions and made no mention of a bench trial.

            Other circuits have held that, if the parties so stipulate, a court may conduct a bench trial based on the record compiled in summary judgment proceedings. See Market Street Associates Ltd. Partnership v. Frey, 941 F.2d 588, 590 (7th Cir.1991); May v. Evansville-Vanderburgh Sch. Corp., 787 F.2d 1105, 1115-16 (7th Cir.1986); Lac Courte Oreilles Band v. Voigt, 700 F.2d 341, 349 (7th Cir.1983); Nielsen v. Western Elec. Co., 603 F.2d 741, 743 (8th Cir.1979); Starsky v. Williams, 512 F.2d 109, 112-13 (9th Cir.1975); see also William W Schwarzer et al., The Analysis and Decision of Summary Judgment Motions 39-40 (1991) ("A court...

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