Lipton v. Nature Co.

• Decision Date: 28 November 1995
• Docket Number: No. 1858,D,1858
• Citation: 71 F.3d 464
• Parties: , 1995 Copr.L.Dec. P 27,468, 37 U.S.P.Q.2d 1012 James LIPTON, Plaintiff-Counter-Defendant-Appellee, v. The NATURE COMPANY, dba The Nature Company of California, Defendant-Cross-Claimant, Michael Wein, Defendant-Cross-Defendant-Appellant, Animal Wisdom Enterprises, Inc., Defendant-Counter-Claimant-Appellant. ocket 94-9123.
• Court: U.S. Court of Appeals — Second Circuit

Page 464

71 F.3d 464

64 USLW 2383, 1995 Copr.L.Dec. P 27,468,

37 U.S.P.Q.2d 1012

James LIPTON, Plaintiff-Counter-Defendant-Appellee, v. The NATURE COMPANY, dba The Nature Company of California Defendant-Cross-Claimant Michael Wein, Defendant-Cross-Defendant-Appellant Animal Wisdom Enterprises, Inc., Defendant-Counter-Claimant-Appellant.

No. 1858, Docket 94-9123.

United States Court of Appeals Second Circuit.

Argued Sept. 18, 1995.

Decided Nov. 28, 1995.

Nancy J. Felsten, New York City (Marcia B. Paul, Kay Collyer & Boose, New York City, on the brief), for Plaintiff-Counter-Defendant-Appellee.

L. Donald Prutzman, New York City (Stecher Jaglom & Prutzman, New York City, John P. Sutton, Haverstock, Medlen & Carroll, San Francisco, California, on the brief) for Defendants-Counter-Claimants-Appellants.

Before: MINER, MAHONEY, and CABRANES, Circuit Judges.

JOSE A. CABRANES, Circuit Judge:

This is an appeal from a final judgment of the United States District Court for the Southern District of New York (Richard Owen, Judge ), granting plaintiff-appellee James Lipton's ("Lipton") motion for summary judgment on his copyright and Lanham Act claims against defendants Animal Wisdom Enterprises, Inc. ("AWE"), its president and principal stockholder, Michael Wein ("Wein"), and The Nature Company, ("Nature"). ¹ The district court's order and final judgment with respect to Wein and AWE, entered on October 14, 1994, implemented various memorandum opinions and orders previously issued by the court. These included a finding that the plaintiff-appellee's work was protectible under copyright law, Lipton v. The Nature Co., 781 F.Supp. 1032 (S.D.N.Y.1992), an award of summary judgment to the plaintiff on his copyright and Lanham Act claims, and a finding that the defendants were willful infringers. The October 14 order awarded the plaintiff enhanced statutory damages in the amount of $100,000, costs and attorneys' fees, and entered a permanent injunction restraining the defendants from further infringement. Wein and AWE appeal.

I. BACKGROUND

At issue in this case is a compilation of "terms of venery" ²--collective terms for identifying certain animal groups--gathered and published by the author and etymologist James Lipton in his book, An Exaltation of Larks. The first edition of the book was published in 1968, and two subsequent editions were published in 1977 and 1991; Lipton holds a valid copyright to all three versions of the book. Lipton's complaint alleged that the defendants created various posters and other products that infringed the copyright of the first and second editions of his book, in violation of 17 U.S.C. Sec. 501 et seq., and unfairly competed with Lipton, in violation of Sec. 43(a) of the Lanham Trademark Act, 15 U.S.C. Sec. 1125.

Lipton compiled his terms of venery through research of various fifteenth-century texts and manuscripts. According to Lipton, he translated the terms from Middle English to modern English and arranged them based on their "lyrical and poetic potential." The first and second editions of the book, which include scattered illustrations and explanatory text, were a considerable success and have sold over 150,000 copies to date. In 1990, in an attempt to further capitalize on the success of his book, Lipton sought to license his compilation for use on various products. In the course of doing so, he discovered that Nature had already licensed the rights to a virtually identical compilation of terms of venery from the defendant, Wein.

In 1988, Wein, doing business as "Animal Wisdom," ³ filed for copyright registration of a compilation of animal terms, representing that the work was original to him. Wein manufactured and sold posters ("the Wein posters") of the compilation to various zoos, libraries, and other entities. In 1988, he approached Nature, a retailer specializing in products about the environment, to market his compilation. Between 1989 and 1990, Nature and Wein entered into a series of licensing agreements by which Nature acquired the right to use Wein's compilation of animal terms on a series of posters, t-shirts, and other products, which came to be known as the "Multitudes" products. Nature sold these products both in its stores and through its catalogs. The catalog copy accompanying the Multitudes poster stated, "Michael Wein has surveyed the English language back to its earliest roots to compile a list of the most remarkable ... names of animal multitudes ever assembled." The Multitudes poster, as well as a note cube marketed by Nature, included copyright notices in the names of Wein and Nature.

Simultaneously, Wein continued to market and sell various adaptations of the initial Wein poster. In 1991, Wein incorporated Animal Wisdom Enterprises to market and distribute these products as the "Animal Congregations" line of merchandise. In its promotional brochure, AWE stated that it had "thoroughly researched dozens and dozens of animals, fish and birds to uncover correct terminology."

Upon learning of Nature's and Wein's actions, Lipton sent a letter demanding that they stop and requesting compensation for the alleged infringement. When they refused, Lipton brought the present suit alleging copyright infringement and unfair competition.

Wein denies copying any edition of Lipton's book and claims that the terms used on the Wein poster and the Multitudes products were copied from a banner or scarf ("the scarf") that he received in the late 1960's while working as an advertising executive in New York City. According to Wein, this scarf, which listed 73 animal terms and one cryptic term--"a synoptic of SCI"--was an unsolicited promotional item from an unidentified source. This scarf was marked as an exhibit during Wein's deposition and was available to the district court. Both Wein and his art director, Michael English, testified that the scarf was the sole source of the compilation featured on the initial poster that Wein marketed to libraries and museums. According to Wein, he decided to market the terms on the scarf as a poster in 1988. Both he and English inspected the scarf, and finding no copyright notice, typeset the terms listed on it. Wein and English contend that the order of the terms on the scarf was "shuffled" on the poster to place some of the more common, recognizable terms at the beginning of the poster and "to make [the terms] flow around the pieces of artwork inserted."

Wein's testimony about the scarf is contradicted by the fact that prior to the filing of Lipton's complaint, he represented to Nature and to Lipton's attorney that he had compiled the list himself from terms that he had written on slips of paper over the years. However, since the filing of this action, Wein has consistently stated that the scarf was the source of the compilation. Wein contends that after approaching Nature in the summer of 1988, he consulted another source, John Train's Remarkable Words with Astonishing Origins, but only used the Train book to check the accuracy of the terms in the compilation that he had given to Nature. Wein claims that it was not until several years later, in connection with AWE's "Animal Congregations" line, that he conducted further research and incorporated additional terms of venery that did not appear on the scarf.

On January 16, 1992, the district court denied the defendants' motion to dismiss, finding that Lipton's compilation of terms was original to him and therefore protectible under copyright law. Lipton v. The Nature Co., 781 F.Supp. 1032 (S.D.N.Y.1992). By opinion dated September 23, 1993 and order and judgment entered October 14, 1994, the district court granted summary judgment in favor of the plaintiff on all counts against defendants Wein and AWE. The court found Wein and AWE liable for copyright infringement and, citing Wein's "contradictory explanations" for the source of his compilation, found their infringement to be willful pursuant to 17 U.S.C. Sec. 504(c)(2). The court also found Wein and AWE liable for violation of the Lanham Act, noting:

Nature featured two separate copyright notices on its poster, in Wein's name for the compilation, and in Nature's name. These copyright notices ... are false designations of origin, and constitute actionable false claims of originality under Sec. 43(a).

....

... Plaintiff's proof ... gives rise to a rebuttable presumption of consumer confusion, which in turn entitles plaintiff to damages under the Lanham Act.

Opinion of Sept. 23, 1993, at 12, 14. Accordingly, the district court enjoined the defendants from use of any terms that, together or separately, are substantially similar to those found in Lipton's book and awarded Lipton costs, attorneys' fees, and enhanced statutory damages in the amount of $100,000.

II. DISCUSSION

A. The Summary Judgment Standard

We review a district court's grant of summary judgment de novo to determine whether there is a genuine issue of material fact and whether the moving party is entitled to judgment as a matter of law. Healy v. Rich Prods. Corp., 981 F.2d 68, 72 (2d Cir.1992). Summary judgment shall be granted "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." FED.R.CIV.P. 56(c). "[T]he mere existence of some alleged factual dispute between the parties will not defeat an otherwise properly supported motion for summary judgment; the requirement is that there be no genuine issue of material fact." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986) (emphasis in original). While the court must view the inferences to be drawn from the facts in the light most favorable to the party opposing the motion, Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (...