Acuff-Rose Music, Inc. v. Jostens, Inc., 95 Civ. 8236(DC).

• Decision Date: 10 December 1997
• Docket Number: No. 95 Civ. 8236(DC).,95 Civ. 8236(DC).
• Citation: 988 F.Supp. 289
• Parties: ACUFF-ROSE MUSIC, INC., Plaintiff, v. JOSTENS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

988 F.Supp. 289

ACUFF-ROSE MUSIC, INC., Plaintiff, v. JOSTENS, INC., Defendant.

No. 95 Civ. 8236(DC).

United States District Court, S.D. New York.

December 10, 1997.

Abelman, Frayne & Schwab by Robert C. Osterberg, New York City, for Plaintiff.

Briggs & Morgan, P.A. by David C. Forsberg, Karna A. Berg, St. Paul, MN, Berlack, Israels & Liberman L.L.P. by Carole L. Fern, New York City, for Defendant.

MEMORANDUM DECISION

CHIN, District Judge.

In 1990, the country western singer Aaron Tippin released a song entitled "You've Got to Stand for Something." It contained the line, "You've got to stand for something or you'll fall for anything." The song was a hit and rose to number five on the national country charts in February 1991.

In December 1992, defendant Jostens, Inc. ("Jostens"), a company that produces and sells class rings, initiated an advertising campaign built on the theme, "If You Don't Stand for Something, You'll Fall for Anything." The campaign prominently featured this slogan in its promotional materials.

In this case, plaintiff Acuff-Rose Music, Inc. ("Acuff-Rose"), the owner of the Tippin song, contends that Jostens has violated its copyright. Defendant Jostens denies that it copied the song and argues that the lyric in question is derived from an unprotectable cliche. Defendant further maintains that any use of the song constitutes fair use within the meaning of 17 U.S.C. § 107.

Both sides moved for summary judgment, and oral argument was held on July 9, 1997. During the argument, the parties agreed that I should decide the case on the record submitted on the summary judgment motions, without a formal trial. (Tr. at 4-6, 29-30). I have now reviewed the record and considered the issues. The following are my findings of fact and conclusions of law pursuant to Federal Rule of Civil Procedure 52(a).

FINDINGS OF FACT

A. The Tippin Song

The song "You've Got to Stand for Something" was written by Aaron Tippin and Buddy Brock, and recorded by Tippin in 1990. Tippin and Brock assigned to Acuff-Rose all rights and interests in the song on October 10, 1988, and April 1, 1990, respectively. Acuff-Rose registered the composition's words and music with the U.S. Copyright Office on August 15, 1990, and remains the registered owner of the copyright to the Tippin song (Pl.Ex. 1).

The composition "is built around the Theme Lyrics to tell the story of a father's advice to stand for principles." (Pl. Mem. at 2). Its lyrics are as follows:

Now Daddy didn't like trouble, but if it came along

Everyone that knew him knew which side he'd be on

He never was a hero, or this country's shinin' light

But you could always find him standing up

For what he thought was right

He'd say you've got to stand for something or you'll fall for anything

You've got to be your own man not a puppet on a string

Never compromise what's right and uphold your family name

You've got to stand for something or you'll fall for anything Now we might have been better off or owned a bigger house

If Daddy had done more givin' in or a little more backing down

But we always had plenty just living his advice

Whatever you do today you'll have to sleep with tonight

(Refrain)

Now I know that things are different than they were in Daddy's days

But I still believe what makes a man really hasn't changed

(Refrain)

Oh, you've got to stand for something or you'll fall for anything

(Def.Ex. 54). The line "You've got to stand for something or you'll fall for anything" appears seven times through the course of the tune. Brock's father, William C. Brock, is credited as being the source of the line. (Pl.Exs.3, 4). The song became a country recording hit in 1990-91, rising to number five on the national country hit charts in February 1991. (Prokasy Aff. at ¶ 12). More than 1.3 million recordings of the song have been sold worldwide, and it even became an "anthem" of sorts for the Persian Gulf War. (Id.).

B. The Jostens Ad Campaign

In December 1992, Jostens, with the assistance of Kruskopf Olson Advertising Agency ("Kruskopf Olson"), developed an advertising campaign for the 1993-1995 school years based on the slogan: "If You Don't Stand for Something, You'll Fall for Anything." A version of the phrase, "U Got 2 Stand 4 Something," appeared on sales brochures, buttons, and t-shirts. (Stitt Declar. at ¶¶ 11-15). The following paragraph appeared in sales brochures, fliers, and posters:

The song says it best: If you don't stand for something, you'll fall for anything. And one of the best ways to show you stand for something is by wearing a Jostens Class Ring. The ring stands for your school. It stands for the people you know. It stands for the greatest class of all time (yours, of course). And it stands for the things you do to make your class the greatest. Most of all, it stands for you. The gold, the stone, the inscriptions, they add up to nothing less than a small piece of your personal history. The ring stands for who you are — and that's something worth standing for.

(Pl.Ex. 10; see also Pl.Ex. 8 (describing early draft of Jostens slogan as "If you don't stand for something — as the song says — you'll fall for anything")). In addition, Kruskopf Olson wrote the music, narration and lyrics for a promotional video/slide show:

Music and lyrics:

Come on

Got to make some changes

Got to make them fast

The way this world is going

How we going to last

We're going to cross the Great Divide

United we stand, together for the [start?]

We've got to stand for what is true

Stand up for me and I'll stand up for you

Just take my side, I'll take your hand

Right is right, we got to stand

Narration:

You know what they say. If you don't stand

for something, you'll fall for anything.

Isn't that the truth? People who don't stand

for something, well they lean a little this way, they lean a little that way, they end up

falling right over. That doesn't happen when

you stand for something. When you have a

rock solid sense of who you are and where you're going, when you have values and

beliefs and standards and convictions, then

you're on a mission and nobody can trip you

up. So do yourself a favor and stand for something. If nothing else, you'll have a great view.

Music and lyrics:

Once you let your hands get [high, help?]

Got to lift you up inside

If you want to run with me

We can set the whole world free

Yeah, yeah

Narration:

Okay. So what's that supposed to mean?

Stand for something. What's to stand for?

Well it doesn't have to be some life or death

thing, like the ozone or the rain forest, the raspberry [Pez?], you could just stand for yourself. If you don't stand for yourself, who will? Or you could stand for your

friends, that's what friends do. From there

you could go all out for your school. You could even help out somebody who doesn't have

the advantages you have, disabled people, old

people and kids who need somebody to look up

to. Hey, they could end up looking up to you. Cuz when you stand for something,

they've got something to look up to.

Music and Lyrics:

We've got to stand up great and tall

We got to grow but forget the wall

We've got to stand for what is right

We've got to work, we've got to try

We've got to stand for our friends

We'll never go with any wind

We're going to stand here until the end

Right is right, we've got to stand

We'll stand up where the air is clear

We'll never live in ???

We will unite across this land

Right is right, we've got to stand

Narration:

It's a Jostens thing. You got to stand for something.

(Stitt Declar. at ¶ 20).

Marla Tipping, General Manager of Special Markets for Jostens and formerly in charge of intellectual property issues for the corporation, did not conduct a prior use search of the slogan "You've got to stand for something or you'll fall for anything" because she considered it to be "the expression of an idea which was not entitled to copyright protection." (Tipping Aff. at ¶ 3). For the same reason, Jostens did not seek a license from Acuff-Rose to use the phrase.

By letter dated September 28, 1994, Suzanne M. Prokasy, Director of Licensing for Acuff-Rose, demanded that Jostens "immediately cease and desist all usage of `You've got to Stand for Something' in any and all catalogues.'" (Def.Ex. A).

Jostens declined to stop using the slogan. In a letter dated October 20, 1994, Jostens pointed out that "titles and other short phrases or expressions are noncopyrightable." (Def.Ex. B).

On February 1, 1995 Acuff-Rose sent Jostens a second cease-and-desist letter. Acuff-Rose indicated that, in its view, the Jostens' catalog "specifically refers to the Composition and even quotes from the lyric." (Def.Ex. C).

This action followed.

CONCLUSIONS OF LAW

A. Applicable Legal Standards

It is well-established that "musical works, including any accompanying words," may be copyrighted under 17 U.S.C. § 102(a)(2). A copier will be liable for copying the musical work in its entirety, that is, the composition's words and music together, as well as for copying just the music or the words alone. See Paul Goldstein, Copyright § 2.8 (2d ed.1996).

To prevail on a claim of copyright infringement, a plaintiff must prove two elements: "ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Arden v. Columbia Pictures Indus., Inc., 908 F.Supp. 1248, 1257 (S.D.N.Y.1995) (quoting Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1295, 113 L.Ed.2d 358 (1991)).

Copying, in turn, is comprised of two requirements: actual copying and improper appropriation. Actual copying may be established either by direct evidence or by circumstantial proof that defendant had access to the protected work and that the allegedly infringing work bears a "probative similarity" to the copyrighted work. See Ringgold v. Black Entertainment Television, Inc., 126 F.3d 70, 75 (2d Cir.1997). Once actual copying has...