Kay Berry, Inc. v. Taylor Gifts, Inc.
| Decision Date | 30 August 2005 |
| Docket Number | No. 04-3809.,04-3809. |
| Parties | KAY BERRY, INC. Appellant v. TAYLOR GIFTS, INC.; Bandwagon, Inc. |
| Court | U.S. Court of Appeals — Third Circuit |
Andrew B. Katz (Argued), Fox, Rothschild, O'Brien & Frankel, LLP, Philadelphia, PA, William L. Stang, Fox, Rothschild, O'Brien & Frankel, LLP, Pittsburgh, PA, for Appellant.
William E. Hilton (Argued), Gauthier & Connors, LLP, Boston, MA, John R. McGinley, Jr., Eckert, Seamans, Cherin & Mellot, LLC, Pittsburgh, PA, for Appellees.
Before McKEE, VAN ANTWERPEN and WEIS, Circuit Judges.
Before us is an appeal from an order granting summary judgment in favor of the defendant-Appellees on a copyright infringement claim. Appellant Kay Berry, Inc. ("Kay Berry") claims that Appellees Taylor Gifts, Inc. ("Taylor") and Bandwagon, Inc. ("Bandwagon") infringed its copyright on its sculptural work—a garden rock cast with a poem found in the public domain. The United States District Court for the Western District of Pennsylvania granted summary judgment after determining that Kay Berry's copyright registration was invalid and that the sculptural work was not entitled to copyright protection. We will reverse.
Kay Berry designs, manufactures, markets and sells "Garden Accent Rocks," which it describes as decorative, cement-cast, outdoor sculptures typically resembling rocks or stones, inscribed with writings. On July 7, 1997, Kay Berry applied for a copyright registration for its entire line of Garden Accent Rocks. It provided its Garden Accent Rock Catalog (the "Catalog") as the document specimen for the registration. The Catalog identified each sculpture by number and featured a description and photograph of each individual work. The United States Copyright Office issued Kay Berry a Copyright Registration Certificate (the "Certificate") with an effective date of July 1, 1997. The Certificate identified the scope of the Certificate's subject matter as simply "[s]culptural works with design and text."
One of Kay Berry's best-selling Garden Accent Rocks is Sculpture No. 646, a rectangular object having a stone-like appearance and a verse inscribed on the face. The verse appears in five lines, inscribed in a right-leaning font with the first letter of each word capitalized:
If Tears Could Build A
Stairway, And Memories
A Lane, I'd Walk Right Up
To Heaven And Bring
You Home Again
During 2003, Bandwagon began supplying to Taylor, and Taylor began marketing and selling, a "Memory Stone," which was similar to Kay Berry's Sculpture No. 646. Like Sculpture No. 646, the Memory Stone was a rectangular object with a stone-like appearance featuring the exact same verse that appears on Sculpture No. 646. The Memory Stone's verse was also laid out in the same five-line format, each word also began with a capital letter, and the entire verse also appeared in a right-leaning font.
Kay Berry sued Taylor and Bandwagon for copyright infringement and moved for a preliminary injunction prohibiting the Appellees from selling the Memory Stone. On December 8, 2003, a United States Magistrate Judge issued a Report and Recommendation suggesting that the District Court deny Kay Berry's motion. The District Court adopted the Magistrate's Report and Recommendation, without change, in an order dated February 23, 2004.
At about the same time, on February 6, 2004, Appellees had filed an amended motion for summary judgment on the infringement claim. On August 2, 2004, the Magistrate issued a Report and Recommendation suggesting that the District Court grant the motion. On August 30, 2004, the District Court adopted the Magistrate Judge's Report and Recommendation as its own opinion and granted summary judgment in favor of Appellees. This timely appeal followed.
The District Court had jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a). This Court has jurisdiction pursuant to 28 U.S.C. § 1291. We exercise plenary review over the District Court's grant of summary judgment and employ the same analysis required of the District Court to determine whether there are any issues of material fact that would enable the nonmoving party to prevail. Hamilton v. Leavy, 117 F.3d 742, 746 (3d Cir.1997). Summary judgment is appropriate when "there is no genuine issue as to any material fact and. . . the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). At the summary judgment stage, we view all evidence and consider all reasonable inferences in a light most favorable to the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
"To establish a claim of copyright infringement, a plaintiff must establish: (1) ownership of a valid copyright; and (2) unauthorized copying of original elements of the plaintiff's work." Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 206 (3d Cir.2002). In granting summary judgment in favor of Appellees, the District Court relied on a Report and Recommendation which concluded that: (1) Kay Berry did not have a valid registration over its multiple works because they were not sufficiently related, (2) Sculpture No. 646 contained no copyrightable subject matter, and (3) Sculpture No. 646 embodied an expression that was inseparable from an underlying idea. For the reasons set forth below, we will reverse.
We begin by addressing the validity of Kay Berry's copyright registration. According to 17 U.S.C. § 411(a), "no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title." See Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir.2003). Kay Berry claims that Sculpture No. 646 was properly registered under Certificate of Registration VA857-542, which covers "Garden Accent Rocks," described as "[s]culptural works with design and text." Along with Registration VA857-542, Kay Berry deposited its Garden Accent Rocks catalog, which featured pictures and descriptions of more than one hundred sculptures, including Sculpture No. 646. Kay Berry claims that this registration covers Sculpture No. 646 along with all of the other works featured in the catalog. The District Court disagreed, reasoning that the individual works featured in the catalog were not validly registered because they were not sufficiently related to each other to qualify for registration as a group of works as required by 17 U.S.C. § 408(c)(1). We believe that this reasoning improperly ignored the governing copyright registration regulations and caused the District Court to evaluate Kay Berry's registration under the incorrect statutory provision.
Initially, Kay Berry argued that its Garden Accent Rocks were properly registered as a group of related works pursuant to 17 U.S.C. § 408(c)(1). The statute states in relevant part:
The Register of Copyrights is authorized to specify by regulation the administrative classes into which works are to be placed for purposes of deposit and registration, and the nature of the copies or phonorecords to be deposited in the various classes specified. The regulations may require or permit, for particular classes . . . a single registration for a group of related works.
17 U.S.C. § 408(c)(1) (2005). Relying on Benham Jewelry Corp. v. Aron Basha Corp., 45 U.S.P.Q.2d 1078, 1087-88, 1997 WL 639037 (S.D.N.Y.1997), Kay Berry claimed that when Congress enacted § 408(c), it specifically attempted to liberalize the copyright laws so as to allow a group of works to be registered together, under a single registration, as long as they were minimally connected. Kay Berry argued that, under this permissive standard, its works were sufficiently related and therefore validly registered as a group of works under the applicable statutory provision.
Although we agree that § 408(c) represents a liberalization of the copyright laws, it does not define the requirements for a valid copyright registration. The applicable subsection states only that "[t]he regulations may require or permit, for particular classes . . . a single registration for a group of related works." 17 U.S.C. § 408(c)(1) (emphasis added).
"It is elementary that the meaning of a statute must, in the first instance, be sought in the language in which the act is framed, and if that is plain, and if the law is within the constitutional authority of the law-making body which passed it, the sole function of the courts is to enforce it according to its terms." Caminetti v. United States, 242 U.S. 470, 485, 37 S.Ct. 192, 61 L.Ed. 442 (1917). Here, the language plainly does not grant to all copyright applicants a general right to register a group of works under a single registration. Our conclusion that the plain language of § 408(c)(1) merely allows the Register of Copyrights to determine what types of works are eligible for group registration is confirmed by the more stringent language of § 408(c)(2), which mandates that the Register of Copyrights establish regulations permitting group registration of works appearing in periodicals. See 17 U.S.C. § 408(c)(2) () (emphasis added).
The Register of Copyrights has exercised the authority delegated by § 408(c)(1) by promulgating rules allowing for group registration for "automated databases," "related serials," "daily newspapers," "contributions to periodicals," "daily newsletters," and "published photographs." See 37 C.F.R. §§ 202.3(b)(4)-(9). Kay Berry, however,...
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