Want Ad Digest, Inc. v. Display Advertising, Inc.
| Decision Date | 03 September 2009 |
| Docket Number | No. 1:08-CV-189 (GLS/DRH).,1:08-CV-189 (GLS/DRH). |
| Parties | WANT AD DIGEST, INC., Plaintiff, v. DISPLAY ADVERTISING, INC. and Edward H. Spain, Defendants. |
| Court | U.S. District Court — Northern District of New York |
Girvin, Ferlazzo Law Firm, Salvatore Ferlazzo, Esq., Robert Manfredo, Esq., of Counsel, Albany, NY, for the Plaintiff.
Office of Joshua A. Sabo, Joshua Sabo, Esq., of Counsel, Troy, NY, for the Defendants.
DECISION AND ORDER
Plaintiff Want Ad Digest, Inc., ("Want Ad") brings this action against defendants Display Advertising, Inc. ("Display") and Edward H. Spain, upon allegations that defendants have, inter alia, infringed Want Ad's copyrights in a publication of classified advertisements known as the Want Ad Digest. Pending are the parties' cross motions for summary judgment on plaintiffs' copyright infringement claims. For the reasons that follow, defendants' motion is granted in part, and the motions are otherwise denied.
The following undisputed facts are drawn from the parties' statements of material facts.1 Want Ad produces a weekly publication called the Want Ad Digest. (See Pl. SMF ¶ 1; Dkt. No. 15:3.) The ads contained in each publication are also published on Want Ad's website. Id. at ¶ 4. The Want Ad Digest contains both display ads, which are normally purchased by businesses, and classified ads, which are typically placed by individuals trying to sell various goods. Id. at ¶¶ 5-7. Plaintiffs contend that they substantially edit and format each classified advertisement submitted before publication, though defendants have submitted a sampling of Want Ad Digest advertisements for which it appears that this is not the case. (See Pl. SMF ¶ 11-12, 16; Dkt. No. 15:3, Ex. B to Spain Aff.; Dkt. No. 22:8.)
Each page of the Want Ad Digest is organized into four columns, with the page number located at the top corner of each page. (See Pl. Exs. 10a-e; Dkt. Nos. 25:2-7.) The top of each left handed page contains the weekly deadline for ad placement, the name of the publication, the issue number and date. Id. The top right hand page contains the name of the publication, two phone numbers for Want Ad, the issue number and the date. Id. The Want Ad Digest contains a table of contents and an index. Id. The table of contents is composed of main headings which are alphabetically arranged by general categories of goods ("Animals," "Appliances," etc.), with alphabetically arranged subheadings under each main heading setting forth types of goods ("Air Conditioners," "Dishwashers," etc.). Id. Following the table of contents, the subheadings appear to be roughly grouped according to general categories of goods. Id. The classified advertisements are then published alphabetically or by year under their corresponding subheading. Id. Each issue of the Want Ad Digest contains a copyright notice on the bottom of the first page of the "Rates and Policies" page. This notice states:
COPYRIGHT 1978 BY WANT AD DIGEST, INC.... Trademarks & copyright is owned by Want Ad Digest Inc., 870 Hoosick Rd., Troy, N.Y. 12180. Published continuously since 1962. All infringements will be prosecuted.
Id. Further, Want Ad owns copyright registrations on issues of the Want Ad Digest as collective works. (See Pl. SMF ¶¶ 33-34; Dkt. No. 15:3.)
Sometime in the past, defendant Spain solicited and obtained display ads from businesses for publication in the Want Ad Digest pursuant to a contract between his company, defendant Display, and Want Ad. Id. at ¶¶ 37, 40. On December 19, 2007, defendants terminated this relationship to pursue the establishment of the Classified Advertiser, of which Spain is the owner. Id. at ¶¶ 36, 46. On December 26, 2007, defendants offered Want Ad $2,000 to use the classified ads contained in the Want Ad Digest in the Classified Advertiser. Id. at ¶ 48. Want Ad rejected this offer. Id. at ¶ 49. Nonetheless, the first volume of the Classified Advertiser was predominantly composed of exact copies of ads and pictures appearing in issue 51 of the Want Ad Digest or on Want Ad's website. Id. at ¶¶ 54, 55, 66. It also contained a small percentage of classified ads from the Albany Times Union and the Daily Gazette. Id. at ¶¶ 56, 57. While defendants stopped using classified ads from these latter sources upon request, subsequent volumes of the Classified Advertiser continued to contain between 50 and 80 percent of Want Ad Digest's classified ads. Id. at ¶¶ 58, 59, 72, 73. The final volume of the Classified Advertiser in which defendants used advertisements from the Want Ad Digest was Volume 9. Id. at ¶ 73.
Organizationally, each page of the Classified Advertiser is divided into four columns, with the page number located at the top corner of each page. (See Exs. 7a-8c; Dkt. Nos. 15:11-15.) The top of each page contains the name of the publication, a phone number, the issue number and the date. Id. The Classified Advertiser contains no table of contents, but has an index. Id. The index is composed of main headings which are alphabetically arranged by general categories of goods ("Animals," "Antiques," "Appliances," etc.), with alphabetically arranged subheadings under each main heading setting forth types of goods ("Air Conditioners," "Dishwashers," etc.). Id. The body of the Classified Advertiser is arranged in the same manner, with advertisements arranged alphabetically or by year under their corresponding subheading. Id.
On February, 20, 2008, Want Ad filed this action, asserting claims under, inter alia, the Copyright Act. Pending are the parties cross motions for summary judgment on these copyright claims.
The standard for the grant of summary judgment is well-established, and will not be repeated here. For a full discussion of the standard, the court refers the parties to its previous opinion in Bain v. Town of Argyle, 499 F.Supp.2d 192, 194-95 (N.D.N.Y.2007).
A copyright holder has a variety of rights under the Copyright Act, including the exclusive rights "to reproduce the copyrighted work," "to prepare derivative works based upon the copyrighted work," and "to distribute copies ... of the copyrighted work to the public." 17 U.S.C. § 106(1)-(3). To prevail on an assertion that these rights have been infringed, "two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Here, the parties cross move for summary judgment on two copyright infringement claims. The first arises out of Want Ad's purported copyright in the individual advertisements appearing in the Want Ad Digest. The second arises out of Want Ad's purported copyright in the Want Ad Digest as a compilation. The court addresses these claims in turn.
The parties do not dispute that "[a]dvertisements are generally capable of receiving copyright protection, provided that their material [has some minimal degree of creativity or originality] and falls within one of the categories of copyrightable subject matter set forth in 17 U.S.C. § 102." Raffoler, Ltd. v. Peabody & Wright, Ltd., 671 F.Supp. 947, 950 (E.D.N.Y.1987); see also Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 894 (9th Cir.1983); MasterCard Intern. Inc. v. Nader 2000 Primary Committee, Inc., No. 00 Civ. 6068(GBD), 2004 WL 434404, at *5 (S.D.N.Y. Mar. 8, 2004). Further, there can be no denying that defendants copied advertisements verbatim from the Want Ad Digest for use in the Classified Advertiser. As such, the heart of the parties' controversy is whether Want Ad owns a valid copyright in the individual classified advertisements appearing in the Want Ad Digest. Defendants assert that Want Ad does not own such a copyright because: 1) the copyrights in the classified advertisements belong to the individuals placing the ads pursuant to the Second Circuit case of Brattleboro Publ'g Co. v. Winmill Publ'g Corp., 369 F.2d 565 (2d Cir.1966); and 2) Want Ad failed to attach an individual notice of copyright to each advertisement under 17 U.S.C. § 404(a). Contrarily, Want Ad contends that it does own a copyright in the individual advertisements because they are the product of Want Ad's originality and creativity. None of these arguments suffice for a grant of summary judgment.
First, the court addresses defendants' contention that Want Ad may not maintain an infringement action as to the individual advertisements appearing in the Want Ad Digest because, pursuant to Brattleboro, the copyrights in such advertisements belong to the persons placing them.
As defendants point out, Brattleboro held that a newspaper publisher who publishes advertisements as an independent contractor does not own the copyrights in such advertisements. See Brattleboro, 369 F.2d at 567-68; see also Elec. Publ'g Co. v. Zalytron Tube Corp., 376 F.2d 592, 593 (2d Cir.1967). Rather, the Brattleboro court found that such rights belonged to the person or entity who placed the advertisement. See Brattleboro, 369 F.2d at 567-68; see also Elec. Publ'g Co. v. Zalytron Tube Corp., 376 F.2d 592, 593 (2d Cir. 1967). This decision was based upon the then uncodified "work for hire" doctrine, which vests all copyrights in original work created by an employee with the employer, regardless of the employer's actual contribution to the work. Defendants urge a similar application of the doctrine here.
What defendants fail to acknowledge, however, is that Congress codified the "work for hire" doctrine subsequent to Brattleboro in a way which renders that case inapplicable here. Under the current statute, a classified advertisement may be considered a "work for hire" which absolutely vests all copyrights in the person...
To continue reading
Request your trial