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

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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.

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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

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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

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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...

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