Castle Rock Entertainment v. Carol Pub. Group

• Decision Date: 27 February 1997
• Docket Number: No. 95 CIV. 0775(SS).,95 CIV. 0775(SS).
• Parties: CASTLE ROCK ENTERTAINMENT, Plaintiff, v. CAROL PUBLISHING GROUP, INC., and Beth B. Golub, Defendants.
• Court: U.S. District Court — Southern District of New York

Page 260

955 F.Supp. 260

CASTLE ROCK ENTERTAINMENT, Plaintiff, v. CAROL PUBLISHING GROUP, INC., and Beth B. Golub, Defendants.

No. 95 CIV. 0775(SS).

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

February 27, 1997.

Davis, Scott, Weber & Edwards, P.C., David Dunn, Emily Granrud, New York City, for Plaintiff.

Beldock, Levine & Hoffman, LLP, Melvin L. Wulf, Daniel M. Kummer, New York City, for Defendant Carol Publishing Group, Inc.

OPINION AND ORDER

SOTOMAYOR, District Judge.

Plaintiff brings this action alleging copyright infringement and unfair competition flowing from defendants' publication of The Seinfeld Aptitude Test ("SAT"), a book of trivia concerning Seinfeld, a popular television comedy program "about absolutely nothing." (Golub Dep. Ex. 3, cover). Though this seemingly invites the conclusion that this opinion is not about anything, plaintiffs claims raise a variety of difficult and interesting questions concerning the proper scope of copyright protection as it extends to popular television programming. For the reasons to be discussed, I grant plaintiffs motion for summary judgment on the issue of copyright infringement, finding that defendants have appropriated original material from Seinfeld without making "fair use" of the program. I deny plaintiffs motion for summary judgment with respect to its claim of unfair competition, however, because there are material issues in dispute concerning this claim.

BACKGROUND

Plaintiff, Castle Rock Entertainment ("Castle Rock"), produced and now owns the copyrights to each episode of the highly successful television series Seinfeld, a comedy program featuring four characters confronting life's "daily, petty annoyances." (Shostak Dep. Ex. 3).¹ Defendants are the author, Beth Golub, and publisher, Carol Publishing Group, Inc. ("Carol"), of SAT, a book of trivia questions "based on the Seinfeld show." (Golub Dep. at 95). According to a view shared by the book's author, Beth Golub, and her editor at Carol Publishing, SAT represents a "natural outgrowth" of Seinfeld. (Golub Dep. Ex. 5 at 000606; Shostak Dep. Ex. 3). Indeed, "[SAT], like the Seinfeld show, is devoted to the trifling, picayune and petty annoyances encountered by the show's characters on a daily basis." (Golub Dep. Ex. 5 at 00606). In other words, defendants designed SAT to "capture Seinfeld's flavor in quiz book fashion." (Golub Dep. Ex. 5 at 000606).

In a proposal she submitted to Carol Publishing, Golub explained that she gathered the information tested in SAT by "watching and reviewing" Seinfeld episodes. (Golub Dep. Ex. 5 at 000606). During her deposition, Golub provided a more detailed account of her methods: she took notes from programs at the time they were aired on television, and she subsequently reviewed videotapes of several of the episodes, some of which she recorded and others that friends provided. (Golub Dep. at 20-21). Plaintiff reasons that Ms. Golub's proposal — with its "watching and reviewing" language — left Carol Publishing with constructive knowledge of Golub's practice of videotaping. Carol Publishing's representatives have denied, however, any actual knowledge that Golub reviewed Seinfeld episodes on tape. (Schragis Dep. at 91; Shostak Dep. at 62-64).

By defendant's count, SAT includes 643 trivia questions about the events and characters depicted in the Seinfeld show. The questions are presented in three forms: 211 are multiple choice; 93 are matching; and the remainder are simple questions. The book draws from 84 of the 86 Seinfeld episodes that had been broadcast as of the time that SAT was published in October 1994. The number of questions devoted to each episode ranges from a low of one to a high of 20. Every answer in the book arises from an episode of the show, though defendant Golub created incorrect answers as choices to the multiple choice questions. (Golub Dep. at 36, 94-95). Actual dialogue from the program is quoted in 41 of the book's questions. Though the parties cannot agree on the percentage of the shows's overall dialogue excerpted in SAT, they offer figures — based upon the script most often referenced in the book, "The Cigar Store Indian" — ranging from a low of approximately 3.6 % (defendants' calculation) to a high of approximately 5.6 % (plaintiffs calculation).

The name "Seinfeld" appears on the front and back covers of SAT in larger print than any other word, in a typeface which, according to plaintiff, mimics the registered Seinfeld logo. (Golub Dep. Ex. 3). During editing, defendants increased the size of the name "Seinfeld" appearing on the back cover. (Shostak Dep. at 107-08). SAT also includes, both on its front cover and in several of its pages, pictures of the principal actors who appear in the Seinfeld series. On the back cover, as defendants note, a disclaimer appears indicating that SAT "has not been approved or licensed by any entity involved in creating or producing Seinfeld." (Golub Ex. 3, back cover). This language is in smaller print than is any other text in the book, but it is surrounded by a border and printed on a shaded background. Defendants contend that their decision to reduce the print size of this disclaimer, while at the same time surrounding it by a border and placing it upon a shaded background, represented an effort to highlight the disclaimer. Plaintiff contends that this decision was a blatant effort by defendants to reduce the prominence of the only indication provided that SAT was produced without plaintiffs cooperation or approval.

Because of its concern with preserving the show's reputation for quality, plaintiff has been highly selective in marketing products associated with Seinfeld. (Wittenberg Aff. ¶¶'s 14, 15). Plaintiff has rejected numerous proposals from publishers seeking approval for a variety of projects related to the show. (Wittenberg Aft. ¶ 23). Plaintiff has licensed the production of a single Seinfeld book, The Entertainment Weekly Seinfeld Companion, and only after threatening litigation in connection with the book's initial unauthorized release. (Wittenberg Aff. ¶ 25). Also, plaintiff has licensed the production of a CD-ROM product which includes discussions of Seinfeld episodes, and which might ultimately include a trivia bank. Plaintiff now alleges that it plans to pursue a more aggressive marketing strategy in the future, a strategy which will include the "publication of books related to Seinfeld." (Wittenberg Aff. ¶ 21). The creative team responsible for Seinfeld would have to be assured creative control over any such projects, however. (Id. at ¶ 23; Wittenberg Dep. at 52). Because that creative team, consisting of Jerry Seinfeld and his partner, Larry David, does not now wish to be distracted from the program, it appears that there has been little, if any, progress in developing such books or products. (Id.).

There is no evidence that the publication of SAT has diminished interest in Seinfeld, or that the profitability of the Seinfeld logo "has been reduced in any way at all." (Wittenberg Dep. at 110). In fact, the show's audience has grown since SAT was first published. (Id. at 109). The television network that broadcasts episodes of Seinfeld has distributed copies of SAT in connection with promotions for the program. (Aronson Dep. at 26). Even the executive producer of Seinfeld, George Shapiro, benignly characterizes SAT as "a fun little book." (Shapiro Dep. at 33). Nevertheless, it is a book which plaintiff believes "free-rides" on the success of Seinfeld, and plaintiff therefore seeks to bar its continued publication.

Plaintiff now moves for summary judgment on its claims of copyright infringement and unfair competition, arguing that SAT is either an unauthorized reproduction, or derivative version, of Seinfeld.² Defendants cross-move for summary judgment, claiming that SAT is not substantially similar to Seinfeld, and that, in any event, the book is protected as "fair use" under the Copyright Act. For the reasons that follow, the Court finds for plaintiff with respect to its claims under the Copyright Act, but is unable to grant either party summary judgment on plaintiffs common law claim of unfair competition.

DISCUSSION

Summary judgment is required when "there is no genuine issue as to any material fact and ... the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). "The moving party has the initial burden of `informing the district court of the basis for its motion' and identifying the matter `it believes demonstrate[s] the absence of a genuine issue of material fact.' "Leibovitz v. Paramount Pictures Corp., 948 F.Supp. 1214, 1217 (S.D.N.Y.1996) (quoting Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986)). Once the movant satisfies its initial burden, the nonmoving party must identify "specific facts showing that there is a genuine issue for trial." Fed.R.Civ.P. 56(e). In assessing the parties' competing claims, the Court must resolve any factual ambiguities in favor of the nonmovant. See McNeil v. Aguilos, 831 F.Supp. 1079, 1082 (S.D.N.Y.1993). It is within this framework that the Court must finally determine "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 2512, 91 L.Ed.2d 202 (1986).

I. Prima Facie Copyright Liability

The Copyright Act grants a copyright holder a variety of rights, including the exclusive rights to "reproduce the copyrighted work" and "to prepare derivative works based upon the copyrighted work." 17 U.S.C. § 106. To succeed on a claim that these rights have been infringed, a plaintiff must demonstrate two elements: "(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publications, Inc. v. Rural Telephone Serv., Inc., 499 U.S. 340, 361, 111...