368 F.3d 77 (2nd Cir. 2004), 03-7363, Silverstein v. Penguin Putnam, Inc.

Docket Nº:03-7363.
Citation:368 F.3d 77
Party Name:70 U.S.P.Q.2d 1773 Stuart Y. SILVERSTEIN, Plaintiff-Appellee, v. PENGUIN PUTNAM, INC., Defendant-Appellant.
Case Date:May 07, 2004
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 77

368 F.3d 77 (2nd Cir. 2004)

70 U.S.P.Q.2d 1773

Stuart Y. SILVERSTEIN, Plaintiff-Appellee,


PENGUIN PUTNAM, INC., Defendant-Appellant.

No. 03-7363.

United States Court of Appeals, Second Circuit

May 7, 2004

Argued: Jan. 8, 2004.

Page 78

Richard Dannay, Cowan, Liebowitz & Latman, New York, N.Y. (Thomas Kjellberg, on the brief), for Appellant.

Mark A. Rabinowitz, Neal, Gerber & Eisenberg LLP, Chicago, IL (Michael A. Carrillo, on the brief), for Appellee.

Before: WINTER, JACOBS, and STRAUB, Circuit Judges.

JACOBS, Circuit Judge.

In 1996, Stuart Y. Silverstein published a book of Dorothy Parker poems that had not been collected in the three volumes of poetry she published in her lifetime, and that Silverstein had mined chiefly from old magazines and newspapers. Silverstein claims copyright in the selection and arrangement of those poems. (The owner of Mrs. Parker's copyright is not involved in this litigation.) Penguin Putnam, Inc. ("Penguin") was offered the opportunity to publish Silverstein's volume in 1994, but declined. In 1999, Penguin issued Dorothy Parker: Complete Poems (" Complete Poems "), which is composed of the three volumes published by Mrs. Parker plus all but one of the uncollected poems in Silverstein's book, which are chronologically arranged at the back.

Silverstein asserts claims against Penguin for copyright infringement, violation of the Lanham Act, immoral trade practices and unfair competition, and for an injunction. After a hearing, the United States District Court for the Southern District of New York (Keenan, J.) granted summary judgment in favor of Silverstein as to copyright, Lanham Act, and immoral trade practices and unfair competition, and it enjoined Penguin from selling or further distributing Complete Poems. See Silverstein v. Penguin Putnam, Inc., No. 01 Civ. 309, 2003 WL 1797848, 2003 U.S. Dist. LEXIS 5487 (S.D.N.Y. Apr. 4, 2003). On March 9, 2004, we vacated the injunction and announced that an opinion would follow.

We conclude that there are material issues of fact as to whether Penguin has taken any creative input by Silverstein that is more than trivial, and we remand for further proceedings. We hold that, in any event, the right asserted by Silverstein is too slight to support an injunction against publication of the Penguin volume: Silverstein holds no copyright in the poems themselves; Penguin has not used Silverstein's arrangement; and the chief principle of Silverstein's selection--that the poems previously had not been collected--reflects an exercise of judgment by Mrs. Parker, not by Silverstein.

Silverstein undertakes to demonstrate a protectible right in the selection by showing that he excluded from his compilation some of the uncollected poems, either because

Page 79

he did not consider them to be "poems" or because he believed they had not been written by Mrs. Parker. There are, however, questions of fact that bear on whether Silverstein is entitled to any protection for his selection of uncollected poems or whether in fact he simply published as many as he could find.


Dorothy Parker, a prolific American poet, short-story writer, screenwriter, and critic, published three volumes of poetry in her lifetime: Enough Rope (1926), Sunset Gun (1928), and Death and Taxes (1931). They have been continuously in print since 1944 within The Portable Dorothy Parker.1

Silverstein undertook to compile the poems that Mrs. Parker had omitted from her collections. After more than a year combing back issues of periodicals, including Vanity Fair, The New Yorker, and Life, Silverstein identified 122 uncollected poems. Most are from magazines, some are from newspapers, and two had never been published. He published them in 1996, in a book entitled Not Much Fun: The Lost Poems of Dorothy Parker (" Not Much Fun ").

In 1994, prior to the publication of Not Much Fun, Silverstein submitted his manuscript to Penguin for consideration. Each page of the manuscript carried the notation: "Compilation ©1994 Stuart Y. Silverstein. All rights reserved." Penguin offered Silverstein $2,000 for the right to publish his compilation as part of a larger volume of Mrs. Parker's work that would include all of her collected and uncollected poems. Silverstein preferred publication in a separate volume.

In 1999, Penguin published Dorothy Parker: Complete Poems. 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,2 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.

Silverstein brought suit in the United States District Court for the Southern District of New York in 2001, alleging that Penguin (i) infringed his copyright under the Copyright Act of 1976, 17 U.S.C. § 101 et seq.; (ii) engaged in "reverse passing off" in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and (iii) engaged in immoral trade practices and unfair competition in violation of New York law. Judge Keenan granted Silverstein's motion for summary judgment and permanently enjoined Penguin from further sales or distribution of Complete Poems. The court found that Not Much Fun was entitled to copyright protection because Silverstein's selection of the poems evinced the level of creativity needed to render it an original work of authorship. He focused on the subjective judgment used by Silverstein in selecting and characterizing the chosen works as poems, "relying on his own taste, judgment, and informed decision-making." Silverstein, 2003 WL 1797848, at *4, 2003 U.S. Dist. LEXIS 5487, at *12. The court found that

Page 80

Penguin infringed Silverstein's copyright by copying and pasting his protected selection into Complete Poems. Id. at *6-*7, 2003 U.S. Dist. LEXIS 5487, at *18-*21.

The district court also granted summary judgment for Silverstein on the Lanham Act claim, finding that Penguin's failure to credit Silverstein in Complete Poems was a willful false designation. Id. at *7-*8, 2003 U.S. Dist. LEXIS 5487, at *22-*24. Finally, the court found that Silverstein's state law claims were not preempted by federal copyright law, and it granted summary judgment for him on those claims as well. Id. at *8, 2003 U.S. Dist. LEXIS 5487, at *25.

The district court denied Penguin's motion for a stay of the injunction pending appeal, finding insufficient likelihood of success on the merits on appeal and no evidence that Penguin would suffer irreparable injury absent a stay. On June 11, 2003, the district court entered a permanent injunction barring Penguin from publishing or selling Complete Poems, and requiring a full recall of all existing copies.

This Court heard oral argument in the appeal on January 8, 2004. On March 9, 2004, we vacated the injunction, but warned that vacatur did not signify that judgment would be entered in Penguin's favor, or that Silverstein may not be entitled to recover damages (pursuant to 17 U.S.C. § 504(c)) or costs and attorneys' fees (pursuant to 17 U.S.C. § 505), the amount of which could be affected by Penguin's resumed distribution of Complete Poems.



This Court reviews the district court's grant of summary judgment de novo. See Young v. County of Fulton, 160 F.3d 899, 902 (2d Cir. 1998). In doing so, we are required to view the evidence in the light most favorable to the non-moving party and to draw all reasonable inferences in its favor. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Maguire v. Citicorp Retail Servs., Inc., 147 F.3d 232, 235 (2d Cir. 1998). Summary judgment is appropriate only where "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c).

It is well settled that compilations of fact may be copyrightable even though facts themselves are not protected. 17 U.S.C. §§ 102, 103 (2003); Feist Publ'ns v. Rural Tel. Serv. Co., 499 U.S. 340, 344, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Because "the sine qua non of copyright is originality," a compilation must possess "at least some minimal degree of creativity" to warrant copyright protection. Id. at 346, 111 S.Ct. 1282.

Mrs. Parker herself created the category of uncollected Parker poems by collecting fewer than all her poems in her lifetime; so that principle of selection owes nothing to Silverstein. Silverstein claims as his creative contribution the weeding out of works that he did not consider to be poems and of works he believed Mrs. Parker did not write. He undertakes to demonstrate his selectivity by identifying (A) differences in classification between Not Much Fun and bibliographies prepared by a Parker biographer; and (B) additions and omissions made to Silverstein's manuscript between the time it was offered to Penguin and the time it was published. Silverstein further claims that his copyediting changes reflect subjective judgment.


Silverstein claims that he and Professor Randall Calhoun--a foremost Parker

Page 81

scholar and bibliographer--disagree as to whether certain uncollected Parker works should be considered poems. In particular, Silverstein cites six works that he labeled as poems or verses and included in Not Much Fun, but that do not appear on the list of poems published in Calhoun's "bio-bibliography" of Mrs. Parker.3

Silverstein claims that he classified six items as poems that Calhoun "concluded" were not. However, Professor Calhoun does not seem to be a party to this scholarly dispute. Silverstein has never...

To continue reading