Apple Barrel Productions, Inc. v. Beard

• Decision Date: 23 April 1984
• Docket Number: No. 83-1354,83-1354
• Parties: , 1984 Copr.L.Dec. P 25,650 APPLE BARREL PRODUCTIONS, INC., A Texas Corporation, and Betty Sue Faglie Combs, Plaintiffs-Appellants, v. R.D. BEARD, Shirley Beard, Don Hagins, Pat Hagins, Sharon Henson, Beverly Dishroon, Arnold Robinson and Kay Jackson, Defendants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 384

730 F.2d 384

222 U.S.P.Q. 956, 1984 Copr.L.Dec. P 25,650

APPLE BARREL PRODUCTIONS, INC., A Texas Corporation, and Betty Sue Faglie Combs, Plaintiffs-Appellants, v. R.D. BEARD, Shirley Beard, Don Hagins, Pat Hagins, Sharon

Henson, Beverly Dishroon, Arnold Robinson and Kay

Jackson, Defendants-Appellees.

No. 83-1354.

United States Court of Appeals, Fifth Circuit.

April 23, 1984.

Bickel & Brewer, William A. Brewer, III, John W. Bickel, Dallas, Tex., for plaintiffs-appellants.

Donald T. Fulton, Fort Worth, Tex., for all defendants-appellees except Suttle.

Appeal from the United States District Court for the Northern District of Texas.

Before BROWN, GEE and WILLIAMS, Circuit Judges.

JERRE S. WILLIAMS, Circuit Judge.

This is an appeal from the denial of plaintiff's motion for a preliminary injunction in a case alleging copyright infringement and misappropriation of intellectual property. Although we reach our conclusion by a different route, we conclude that the court did not abuse its discretion in refusing to grant the preliminary injunction.

FACTS

This case pits against each other two country music programs, both of which feature children performers. The first, "The Country Kids Show," was developed in 1981 by plaintiff, Betty Sue Faglie Combs. ¹ Combs auditioned talent for the show on October 23, 1982, and selected 28 children to perform in the show. Children of the various defendant parents were among those selected.

From November, 1982, through January 8, 1983, the show was rehearsed weekly for a total of more than twenty times. Three live performances of the show were staged. A filming of the televised version of the show was scheduled for January 22, 1983. Prior to the filming, however, a conflict developed between the defendant parents group and Ms. Combs. The defendants subsequently withdrew their children from "The Country Kids Show" cast. At this point, the defendants formed a new group and began performing a country music show featuring their children under the new name of "Kids 'n Country."

On March 28, 1983, Combs and Apple Barrel Productions, Inc., the assignee of Combs' rights in the concept and in the script, filed a complaint and a motion for a preliminary injunction, claiming that the "Kids 'n Country" show was almost identical to "The Country Kids Show." Plaintiffs alleged copyright infringement, false designation of origin, trademark infringement, and disparagement and unfair competition. Plaintiffs requested that the defendants be enjoined from infringing plaintiffs' copyright, from using the name "Kids 'n Country" or any similar words in producing a children's country music show or in connection with the marketing of any items for sale, from disparaging plaintiffs or "The Country Kids Show," and from picketing plaintiffs' auditions. Plaintiffs also requested $250,000 in damages and an accounting for all profits derived by virtue of the allegedly illegal acts.

Evidentiary hearings on the preliminary injunction motion were held on April 15 and 18, 1983. At the hearings, plaintiffs presented evidence only on the copyright infringement claim and on an additional claim, misappropriation of intellectual property. The district court denied the preliminary injunction, ² and plaintiffs appeal.

I. PRELIMINARY INJUNCTION

This appeal questions solely the propriety of the denial of the preliminary injunction by the district court. In order to secure a preliminary injunction, the movant has the burden of proving four elements: (1) a substantial likelihood of success on the merits; (2) a substantial threat that the movant will suffer irreparable injury if the injunction is not issued; (3) that threatened injury to the movant outweighs any damage the injunction might cause to the opponent; and (4) that the injunction will not disserve the public interest. Dallas Cowboy Cheerleaders v. Scoreboard Posters, Inc., 600 F.2d 1184, 1187 (5th Cir.1979).

The decision to grant or deny a preliminary injunction lies within the discretion of the district court and may be reversed on appeal only by a showing of abuse of discretion. City of Meridian, Mississippi v. Algernon Blair, Inc., 721 F.2d 525, 527 (5th Cir.1983). The four prerequisites for preliminary injunctive relief are mixed questions of fact and law. In reviewing the actions of the district court for abuse of discretion, we uphold the district court's findings of fact unless clearly erroneous. Fed.R.Civ.P. 52(a). The court's conclusions of law, however, "are subject to broad review and will be reversed if incorrect." Commonwealth Life Insurance Co. v. Neal, 669 F.2d 300, 304 (5th Cir.1982).

In the present case, the district court denied the plaintiffs' motion for a preliminary injunction solely on the basis of its conclusion that plaintiffs had not established a substantial likelihood of success on the merits, the first requirement of the four prong test. Plaintiffs contend that in making this conclusion, the district court abused its discretion for two significant reasons: (1) the court improperly analyzed plaintiffs' copyright infringement claim; (2) the court failed to analyze plaintiffs' claim of misappropriation of intellectual property or at least utilized an incorrect legal standard in this analysis.

II. COPYRIGHT INFRINGEMENT

1. The Issue of Standing

We note preliminarily that plaintiffs in this case had standing to maintain a copyright infringement action, despite the fact that they had not received a certificate of copyright registration from the Copyright Office by the time of the preliminary injunction hearing. In order to bring suit for copyright infringement, it is not necessary to prove possession of a registration certificate. One need only prove payment of the required fee, deposit of the work in question, and receipt by the Copyright Office of a registration application. 2 Nimmer on Copyright Sec. 7.16[B]. Plaintiffs introduced evidence at the district court hearing which established that these prerequisites had been satisfied. Thus, if proper, the district court could have granted preliminary injunctive relief for violation of copyright. Further, the propriety of the district court's decision against the injunction is not affected by the fact that since the hearing plaintiffs have received a registration certificate.

2. Scope of Copyright Interest

Copyright infringement is shown by proof of "ownership" of copyrighted material by plaintiff and proof of "copying" by the defendant. Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1375 (5th Cir.1981). "Ownership" of copyrighted material in turn, is shown by proof of originality, copyrightability, and compliance with applicable statutory formalities. ³

Plaintiffs claimed copyright ownership with respect to their original expression of the idea of a country music show performed by children. In their application for copyright registration, the plaintiffs presented various aspects of the series: the characters involved in the show, the sets, the costumes, a sample script, and a selection of songs to be performed by the children. The plaintiffs did not request a copyright over the individual component parts of the show, but instead, applied for a copyright with respect to the combination of the components--the production as a whole. Similarly, plaintiffs did not claim copyright infringement with respect to the individual songs ⁴ or dances performed in "The Country Kids Show," but only infringement of their manner of presentation of the songs and dances.

Despite the fact that plaintiffs only alleged copyright protection over its show as a whole, the district court did not view the show as a separate entity. Instead, the court divided "The Country Kids Show" into three distinct areas--script, design, and format--and questioned whether those components were original and/or copyrightable. The court made fact findings, for example, that the dialogue was not the same as that used in defendants' show, the songs performed in plaintiffs' show were not original, and the design elements of the show (costumes, hay bales, American flags) were not copyrightable because they presented "nothing new". Once the court determined that the components of "The Country Kids Show" were not original creations of the plaintiffs, or copyrightable by the plaintiffs, it concluded that the show itself could not be the subject of copyright protection, either.

Plaintiffs contend that this dissected form of analysis was incorrect, and we agree. Despite the fact that the songs and dances performed in "The Country Kids Show" were not original compositions, copyright protection was still possible with respect to the show itself. Plaintiffs' show could be found to be a "compilation," "a work formed by the collection and assembling of preexisting materials ... selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 17 U.S.C. Sec. 101. Copyright protection may extend to such a compilation, ⁵ even if the material of which it is composed is not copyrightable itself or is already subject to a previous copyright. ⁶ See, e.g., National Association of Broadcasters v. Copyright Royalty Tribunal, 675 F.2d 367, 378 (D.C.Cir.1982) (selection and arrangement of various programs into "broadcast day" of television station constitutes copyrightable compilation that may be owned by station regardless of ownership of copyrights in individual programs); Roy Export Company Establishment of Vaduz, Liechtenstein v. Columbia Broadcasting System, 672 F.2d 1095, 1103 (2d Cir.), cert. denied, --- U.S. ----, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982) (film composed of excerpts from previously copyrighted Charlie Chaplin films was copyrightable itself as original creative endeavor); Baldwin Cooke Company v. Keith Clark, Inc., 383 F.Supp. 650, 654 (N.D.Ill.1974), aff'd, 505 F.2d 1250 (7th Cir.1974) (per curiam) (Executive Planner, a combination calendar,...