Franklin v. Ciroli, Civ. A. No. 94-10301-JLT.

• Decision Date: 01 April 1994
• Docket Number: Civ. A. No. 94-10301-JLT.
• Parties: Darlyne FRANKLIN and Paul Franklin, d/b/a Franklin Productions, Plaintiffs, v. Mario D. CIROLI, Defendant.
• Court: U.S. District Court — District of Massachusetts

865 F. Supp. 940

Darlyne FRANKLIN and Paul Franklin, d/b/a Franklin Productions, Plaintiffs, v. Mario D. CIROLI, Defendant.

Civ. A. No. 94-10301-JLT.

United States District Court, D. Massachusetts.

April 1, 1994.

A. Colarossi, Joseph V. Cattoggio, Revere, MA, for plaintiffs.

Richard L. Vitali, City Solicitor's Office, Samuel A. Vitali, Peralta, Gilligan & Vitali, Lynn, MA, for defendant.

MEMORANDUM

TAURO, Chief Judge.

I. Background

Plaintiffs Darlyne and Paul Franklin, d/b/a Franklin Productions (the "Franklins"), create and produce theatrical shows. In February 1992, they created a show entitled "Joey and Maria's Comedy Italian Wedding" ("Joey & Maria"). Their copyright application for "Joey & Maria" was filed on November 26, 1993, and has since been granted.

The Franklins claim that in September 1993, they entered into an oral contract with defendant Mario D. Ciroli, the owner and operator of the Montvale Plaza, a Stoneham function hall. The parties' contract provided that "Joey & Maria" would be performed at the Montvale Plaza from September 1993 until December 1993. According to plaintiffs, both parties later orally agreed to add six performances in January and February 1994, for a payment of $2,750.00 per show.

Beginning in November 1993, Ciroli began advertising performance dates and seeking actors for his own show — "a Comedy Italian Wedding" — to be performed at the Montvale Plaza in 1994. The Franklins now claim that Ciroli's new production copied their production and infringes their copyright.

In addition to their claim for copyright infringement (Count I), plaintiffs have asserted several state law claims, including claims for fraud (Count II), breach of contract (Count III), unfair competition (Count IV), violations of Mass.Gen.L. ch. 93A (Count V), and interference with advantageous business relations (Count VI).

Presently before the court is the Franklins' motion for a preliminary injunction.¹

II. Copyright Infringement Claim

When considering a motion for injunctive relief, the court considers whether: (1) the plaintiff has demonstrated a substantial likelihood of success on the merits; (2) the plaintiff will suffer irreparable harm if the relief is not granted; (3) the injury outweighs the harm, if any, that granting the injunction will cause the nonmovant; and (4) granting the injunction is consistent with public interest. Planned Parenthood League of Mass. v. Bellotti, 641 F.2d 1006, 1009 (1st Cir.1981). The court first considers the Franklins' likelihood of success on the merits of their infringement claim, the "sine qua non" of the four-part test. Weaver v. Henderson, 984 F.2d 11, 12 (1st Cir.1993).

A. Likelihood on the Merits

To prevail on a claim of copyright infringement, a plaintiff must show (1) ownership of a valid copyright; and (2) copying of the protected work by the alleged infringer. Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 605 (1st Cir. 1988). Consequently, copyright registration is a "condition precedent" to filing an infringement claim. Quincy Cablesystems, Inc. v. Sully's Bar, Inc., 650 F.Supp. 838, 850 (D.Mass.1986).

i. Validity of the Registration

In this case, the Franklins have submitted a copy of their copyright registration, which is prima facie evidence of a valid copyright. 17 U.S.C. § 410(c). This presumption of validity may be rebutted, however. See Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir.1991).

Ciroli contests the validity of the Franklins' copyright registration for "Joey & Maria", arguing that their application was incomplete and incorrect because (1) it failed to include the date and nation of its first publication; and (2) it failed to identify preexisting works that "Joey & Maria" incorporates, in violation of the copyright statute. See 17 U.S.C. § 409(9).

Upon review of both the registered work and the copyright statute, the court initially observes that the Franklins' work appears to constitute a "derivative work."² As a result, the Franklins' registration application should have listed the names of preexisting works and a brief statement of the additional material covered in the copyright claim being registered. See 17 U.S.C. § 409(9).

But several courts have held that errors on a registration application do not affect the plaintiff's right to sue for infringement, unless the errors or failures (1) are knowing; (2) harmed or prejudiced the defendant in some way or affected the validity of the copyright; and (3) may have caused the Copyright Office to reject the application. See Eckes v. Card Prices Update, 736 F.2d 859, 861 (2d Cir.1984); Yamate USA Corporation v. Sugerman, 1991 WL 274854 at *7, 1991 U.S. Dist. LEXIS 20701 at *20 (D.N.J. 1991); Dynamic Solutions, 646 F.Supp. at 1341; Iris Arc v. S.S. Sarna, Inc., 621 F.Supp. 916, 920 (E.D.N.Y.1985); and Videotronics v. Bend Electronics, 586 F.Supp. 478, 485 (D.Nev.1984).

After reviewing the scripts, this court observes that preexisting works account for a relatively insignificant part of the performance. Consequently, it is highly unlikely that omission of those works prejudiced Ciroli or would have caused the copyright office to reject the Franklins' application. Notably, Ciroli has not asserted that the Franklins' errors were knowing and intentional, prejudicial to him, or likely to have caused the Copyright Office to reject their application. The court, therefore, finds that these omissions do not invalidate the Franklins' copyright registration.

Similarly, with respect to the Franklins' failure to list the dates of publication, the court again finds that this failure does not invalidate their registration. Based upon the evidence submitted with the parties' memoranda, and the arguments made at the hearing on the motion, there is no reason to believe that the omissions were knowing, that they affected the validity of the copyright, or that they somehow prejudiced Ciroli. See PRC Realty Systems v. National Ass'n of Realtors, 766 F.Supp. 453, 461 (E.D.Va.1991), rev'd in part on other grounds, 972 F.2d 341, (errors in titles and dates of completion do not affect the validity of a copyright).³

The court, therefore, concludes that plaintiffs have established ownership of a valid copyright. As a result, the Franklins' likelihood of success depends upon their ability to prove that Ciroli has copied their copyrighted production.

ii. Copying of the Protected Work

Copying of a protected work by an alleged infringer is generally established by showing that (1) the defendant had access to the copyrighted work; and (2) there is a "substantial similarity" between the protected work and the alleged infringing work. Concrete Machinery, 843 F.2d at 606.

Ciroli does not appear to dispute that he had access to the Franklins' work during the several months that "Joey & Maria" was performed at his hall. Rather, Ciroli argues that the Franklins have failed to demonstrate that there is a "substantial similarity" between their protected script and his allegedly infringing script. Citing Midas Productions, Inc. v. Baer, 437 F.Supp. 1388, 1390 (C.D.Cal.1977), Ciroli specifically argues that he did not copy any protected elements of plaintiffs' show because there is no protected interest in stereotyped characters.⁴

The First Circuit has labeled "substantial similarity" an "elusive concept," adding that it refers "only to the expression of the artist's concept, not the underlying idea itself; mere identity of ideas expressed by two works is not substantial similarity giving rise to an infringement action." Concrete Machinery, 843 F.2d at 606 (emphasis in original). The First Circuit added that "an artist can claim to `own' only an original manner of expressing ideas," not the ideas themselves. Id. (emphasis added). As a result, this court is concerned only with a comparison of the original expression contained in "Joey & Maria" and Ciroli's script, not with any stereotyped themes, plots, or characters.

To determine whether there is a "substantial similarity" between the original elements in two works, a court initially "dissects" the works to assess whether there are sufficient articulable similarities to justify a finding that the alleged infringer has copied from the protected work. Id. at 608. Once copying has been established, the court may then determine whether the copying was sufficient to constitute "unlawful appropriation" by using the "ordinary observer test". Id.

Upon review of the original expression in the two productions, the court agrees that the Franklins have not established "sufficient articulable similarities" to justify a finding that Ciroli copied their protected work. The "idea" of deriding Italian weddings is capable of various modes of expression. The Franklins' and Ciroli's versions differ in several ways.⁵ In fact, the court concludes that the only similarities between the two scripts are (1) that both scripts rely on crude ethnic caricatures as cast members; and (2) both scripts are singularly unfunny.

As a result, the court finds that the Franklins are not likely to establish a "substantial similarity" between the original elements of their show and Ciroli's production.⁶ Given that the likelihood of success on the merits is the critical factor when considering a motion for a preliminary injunction,⁷ it is not necessary to treat the remaining elements of the test in extensive detail.⁸

B. Irreparable Harm

In general, once a plaintiff has established infringement of a valid copyright, irreparable harm is presumed, Concrete Machinery, 843 F.2d at 612. In this case, however, the court is not convinced that Ciroli's show infringes the Franklins' copyright.⁹ Consequently, irreparable harm will not be presumed.¹⁰

C. Public Interest

The issue of public policy is rarely a "genuine issue" when a plaintiff has already demonstrated a likelihood of success on the merits. Concrete Machinery, 843 F.2d at 612. Here,...