996 F.2d 1366 (2nd Cir. 1993), 919, Twin Peaks Productions, Inc. v. Publications Intern., Ltd.

Docket Nº:919, 1392, Dockets 92-7933, 92-7985.
Citation:996 F.2d 1366
Party Name:27 U.S.P.Q.2d 1001, TWIN PEAKS PRODUCTIONS, INC., Plaintiff-Appellee-Cross-Appellant, v. PUBLICATIONS INTERNATIONAL, LTD., Louis N. Weber, Scott Knickelbine, and Penguin USA, Inc., Defendants-Appellants-Cross-Appellees.
Case Date:June 07, 1993
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit
 
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996 F.2d 1366 (2nd Cir. 1993)

27 U.S.P.Q.2d 1001,

TWIN PEAKS PRODUCTIONS, INC., Plaintiff-Appellee-Cross-Appellant,

v.

PUBLICATIONS INTERNATIONAL, LTD., Louis N. Weber, Scott

Knickelbine, and Penguin USA, Inc.,

Defendants-Appellants-Cross-Appellees.

Nos. 919, 1392, Dockets 92-7933, 92-7985.

United States Court of Appeals, Second Circuit

June 7, 1993

Argued March 1, 1993.

As Amended July 6, 1993.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Dorothy M. Weber, New York City (Eugene L. Girden, Margaret Ferguson, Shukat Hafer & Weber, on the brief), for defendants-appellants-cross-appellees.

Richard Lehv, New York City (Weiss Dawid Fross Zelnick & Lehrman, on the brief), for plaintiff-appellee-cross-appellant.

Before: NEWMAN and WINTER, Circuit Judges, and CARMAN, [*] Judge, United States Court of International Trade.

JON O. NEWMAN, Circuit Judge:

This appeal requires adjustment of the competing rights of authors under circumstances where the work of a second author contains both comment on a well-known work of a first author and substantial portions of the normally protectable expression contained in the first work. The appeal presents several copyright and trademark issues arising out of defendants' publication of a book about plaintiff's popular television program "Twin Peaks." The major copyright issue is whether a book containing a detailed summary of the plot of a fictional work constitutes fair use of the fictional work. We must also decide questions concerning the scope of trademark protection for literary titles and several issues concerning copyright damages.

The issues arise on the appeal of defendants Publications International, Ltd. ("PIL"), Louis N. Weber, Scott Knickelbine, and Penguin USA, Inc. and the cross-appeal of plaintiff Twin Peaks Productions, Inc. ("TPP") from the July 29, 1992, judgment of the District Court for the Southern District of New York (John S. Martin, Jr., Judge) finding that the defendants' book infringed copyrights in the scripts for several episodes of the television program "Twin Peaks" and also infringed the trademark TWIN PEAKS. 778 F.Supp. 1247 (1991). The judgment enjoined publication of the book and use of the trademark, and awarded damages and attorney's fees totaling nearly $280,000. We affirm as to copyright liability, vacate and remand as to trademark liability, affirm as to copyright damages, and vacate and remand as to attorney's fees.

Background

"Twin Peaks" premiered on ABC in April 1990. The first eight episodes received high ratings--up to a third of the nation's television viewers--and extensive positive press coverage. See William Grimes, Welcome to Twin Peaks and Valleys, N.Y. Times, May 5, 1991, § 2, at 1. The second season of the show was far less successful, leading to its cancellation in June 1991. The producer of the show, TPP (formerly Lynch/Frost Productions) obtained copyright registrations and owns the unregistered trademark TWIN PEAKS.

In October 1990, PIL published "Welcome to Twin Peaks: A Complete Guide to Who's Who and What's What" ("the Book"), based on the first eight episodes. The 128-page book has seven chapters, dealing with, respectively, (1) the popularity of the show; (2) the characters and the actors who play them; (3) the plots of the eight episodes, some commentary on the plots, and "unanswered questions"; (4) David Lynch, the creator of the show; (5) Mark Frost, the producer of the show, and Snoqualmie, Washington, the location of the show; (6) the music of the show; and (7) trivia questions and quotations constituting the "wit and wisdom of Agent Cooper," one of the characters. The cover of the book contains a disclaimer, indicating that PIL is not affiliated with Lynch/Frost

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Productions, ABC, and various other entities. The book was written by defendant Scott Knickelbine and distributed by defendant Penguin USA, Inc., under its SIGNET imprint. Defendant Louis N. Weber is the president of PIL.

Upon publication, PIL was threatened with a copyright action by Simon & Schuster, which holds certain book rights to the "Twin Peaks" programs. PIL responded by instituting a declaratory judgment action against Simon & Schuster in the Northern District of Illinois. TPP made its own demand that PIL cease production of the Book, and PIL amended its complaint in the declaratory judgment action to add TPP as a defendant. TPP moved successfully to dismiss the action against it for lack of personal jurisdiction. See Publications International, Ltd. v. Simon & Schuster, Inc., 763 F.Supp. 309 (N.D.Ill.1991). The litigation between PIL and Simon & Schuster was settled in February 1991 by an agreement allowing PIL to continue publication of the Book with certain modifications.

TPP then filed the instant action in the Southern District of New York, alleging copyright infringement, trademark infringement, unfair competition, and trademark dilution. The parties cross-moved for summary judgment on liability, stipulating that there were no disputed issues of fact. The District Court found for TPP on the copyright, trademark, and unfair competition claims, and for PIL on the trademark dilution claim. The Court rejected fair use and First Amendment defenses asserted by PIL. The parties then agreed to submit the damages issues on papers, but PIL subsequently requested an evidentiary hearing limited to the issue of willfulness. Following this hearing, the District Court determined that PIL had willfully infringed TPP's copyrights. The Court enjoined further copyright or trademark violations, and awarded TPP the following damages: (1) against PIL, either statutory damages of $120,000 or actual damages (based on a reasonable royalty) of $125,000, at TPP's option; (2) against Penguin, $26,584, constituting Penguin's profits; (3) against Knickelbine, $3,000, constituting his profits; and (4) against PIL, $130,324.25 in attorney's fees, constituting TPP's fees in both the Illinois and New York actions. The Court also determined that PIL's profits were $52,108, but declined to award this sum in addition to statutory damages or a reasonable royalty.

On appeal, PIL attacks the findings of copyright and trademark liability, the finding of willfulness, several aspects of the calculation of damages, and the award of attorney's fees. In its cross-appeal, TPP contends that it should have been awarded PIL's profits in addition to actual damages. TPP also seeks to recover fees expended on this appeal.

Discussion

I. Copyright Liability

Initially, we note some confusion in TPP's identification of the works alleged to be infringed. The complaint alleges copying of "the Program," a phrase used in the complaint to mean the "television series entitled 'Twin Peaks.' " There is no claim in the complaint that the videotapes of the episodes as televised were ever registered. Judge Martin's opinion granting summary judgment found infringement of the copyright in the teleplays (scripts), but the injunction prohibits infringing the copyrights in the "program." At oral argument in this Court, in response to a question, TPP said that copyright registrations had been obtained only for the teleplays. However, in a post-argument submission, TPP sought to correct that response. TPP asserted that a copyright registration had been obtained for the script of the first episode, that copyright registrations had been obtained for the televised videotapes of the seven subsequent episodes, and that a separate copyright registration had later been obtained for the televised videotape of the first episode. As the ensuing discussion reveals, our disposition of the copyright issues is ultimately unaffected whether TPP's registrations apply to the teleplays, to the televised episodes, or, as alleged for the first episode, to both the teleplay and the televised episode.

  1. Prima facie copyright liability

    PIL first makes several related attacks on the District Court's determination

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    that, at least absent a fair use or First Amendment defense, PIL infringed TPP's copyrights. To make out a prima facie case of copyright liability, the copyright holder must prove "ownership of a valid copyright, and ... copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, ----, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). The plaintiff may establish copying either by direct evidence or by showing that the defendant had access to the plaintiff's work and that the two works are substantially similar. See Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977). 1 PIL contends that the District Court erred in finding that PIL had access to the teleplays, that substantial similarity existed between the Book and the teleplays, and that the Book was a derivative work of the teleplays.

    1. Access. PIL argues that because there is no evidence that it had access to the teleplays, TPP's infringement claim fails as a matter of law. Yet PIL has conceded that it had access to the broadcast programs, and does not dispute that the broadcast programs contained virtually all of the protected expression in the teleplays. In isolated instances, dialogue quoted in the Book varies slightly from dialogue as set forth in the teleplays, presumably resulting from variations that occurred in the course of making the television programs, but these instances are insignificant. One who views a performance of a copyrighted work and copies expression contained in that work may be found to have infringed. See 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.03[C], at 2-32 (1992) (hereafter "Nimmer"). In the circumstances of this case, we hold that PIL's access to the televised programs serves as the functional equivalent of access to...

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