Lipton v. The Nature Co.

• Decision Date: 16 January 1992
• Docket Number: No. 91 Civ. 3007 (RO).,91 Civ. 3007 (RO).
• Citation: 781 F. Supp. 1032
• Parties: James LIPTON, Plaintiff, v. THE NATURE COMPANY, et al., Defendants.
• Court: U.S. District Court — Southern District of New York

781 F. Supp. 1032

James LIPTON, Plaintiff, v. THE NATURE COMPANY, et al., Defendants.

No. 91 Civ. 3007 (RO).

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

January 16, 1992.

Mark P. Ressler, Kay Collyer & Boose, New York City, for plaintiff.

Noel M. Cook, Owen Wickersham & Erickson, San Francisco, Cal., Janet Dore, Morgan & Finnegan, New York City, John P. Sutton, San Francisco, Cal., for defendants.

OPINION AND ORDER

OWEN, District Judge:

Plaintiff James Lipton is an etymologist and author of the copyrighted book, An Exaltation of Larks, published originally in 1968, with a second edition in 1977 and an expanded edition in 1991. The section of the book at issue here involves seventy-six "terms of venery" — collective terms relating to nature and hunting. Defendant The Nature Company, under a license from defendant Michael Wein, manufactures and sells various products on which are imprinted seventy-three terms referred to as "Multitudes"; these terms duplicate Lipton's terms of venery relating to animals and to nature. Wein has copyright registration for his compilation of terms, and he licensed the terms to Nature. Of these seventy-three terms, seventy-two replicate Lipton's exactly. In addition, Lipton represents that the coordination and arrangement of the Multitudes terms is substantially similar to the coordination and arrangement Lipton uses in his book, and that several of the Multitudes terms even repeat translation and grammatical errors that appear in earlier editions of An Exaltation of Larks.

Lipton discovered the defendants' alleged infringements only when he sought to license his terms of venery for commercial use. He now sues alleging a violation of the copyright laws, claiming that Wein took his Multitudes terms from An Exaltation of Larks. While in its catalogue advertising the Multitudes products, Nature asserts that Wein surveyed the English language back to its roots to compile the Multitudes list, Wein's counsel maintained at oral argument that Wein found the Multitudes terms on a scarf and adopted them as his own, and that they are therefore part of the public domain.

At oral argument, I raised the issue sua sponte as to whether Lipton's compilation of terms is copyrightable. I conclude on this record that it is. Although some of the terms in his compilation are generally known and in the public domain, many others were creatively interpreted from Middle English and are therefore products of his imagination. To compile his work, Lipton perused fifteenth century texts and manuscripts, many of which were written in Middle English. Lipton translated the terms from Middle English to Modern English, choosing modern definitions for words which had either conflicting or no apparent parallels in Modern English. Lipton asserts that these terms varied widely from list to list in number, spelling, orthography, and often in the choice of terms used. Lipton notes that his translation of these terms was often a result of his own subjective whim or preference in determining which term to use and in which form to translate it. He used his knowledge and familiarity with the culture of Middle English, as well as his own creativity, in selecting the terms of venery that appear in An Exaltation of Larks. Lipton's arrangement of the terms was original to him; he did not follow any sort of alphabetical, chronological, or other system.

Because Lipton's choice was a creative process unique to him, and because it is unlikely that another individual, even a scholar of Middle English, would choose both the same selection of animals and the identical terms for the collectives, Lipton's work comes within the protection of the copyright laws. The seventy-six terms of venery he includes are not a comprehensive or complete list of all the terms of venery; rather, Lipton used his own judgment both in the selection of terms and in their arrangement, considering such factors as the fluidity of language and the lyrical and poetic potential of the arrangement.

Lipton's work is certainly that envisioned by the Supreme Court as deserving of protection under the Copyright Laws. In Feist Publications, Inc. v. Rural Telephone Service Company, Inc., ___ U.S. ___, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), the Court reaffirmed the principle that copyright protection should be granted to original compilations of fact. An original compilation is defined as one involving the collection and assembly of preexisting data, the selection, coordination or arrangement of that data, and a resulting work that is original by virtue of the selection, coordination or arrangement of the data contained in the work. Feist, 111 S.Ct. at 1293. Choices regarding selection and arrangement of facts, made independently by the compiler and entailing even a minimal degree of creativity, are deserving of protection. Feist at 1289. While even considerable labor and research efforts are not entitled to copyright protection; however, both creative product and subjective selection and arrangement of information are. See Eckes v. Card Prices Update, 736 F.2d 859, 862 (2d Cir.1984).

Assuming that at trial the foregoing is proven, Lipton is entitled to enjoy the fruits of his creative labor, and to profit from the ability to license his work to others. Other issues of fact to be tried are the origin of Wein's Multitudes terms and whether they infringe upon Lipton's compilation.

I now address defendants' motion to dismiss or transfer this action for improper venue and failure to join an indispensable party, or, alternatively, to transfer this action to the Northern District of California for the convenience of the parties.

Both the Rule 19 motion regarding indispensability of parties and the forum non conveniens motion are addressed to the court's equitable discretion. Necessary and indispensable parties can only be determined in the context of the particular litigation; the inquiry must be a fact-based one. Ente Nazionale Idrocarburi v. Prudential Securities Group, Inc., 744 F.Supp. 450, 456 (S.D.N.Y.1990). Wein's interests are directly at stake here; an infringement action against Nature necessarily involves Wein's own rights and activities, since Lipton is requesting that Wein's copyright in the Multitudes collection be cancelled and his commercial use of the terms enjoined. If Wein were not a party to this suit, Nature would face a strong likelihood of being subject to duplicative litigation and inconsistent judgments. Wein is thus an indispensable party, as the validity of his copyright is directly at stake.

Nature and Wein contend that because Wein is an indispensable party, but is not subject to jurisdiction in New York under any of the provisions of the CPLR, the action must be transferred.¹ I find, however, that Wein is subject to jurisdiction in New York. Lipton has made a prima facie showing that this court has jurisdiction over Wein. Under the long-arm statute, CPLR Section 302, Wein can be a defendant in New York. The claims here arise from Wein's contract to supply goods or services in New York, CPLR Section 302(a)(1), allege the commission by Wein of a tortious act outside New York causing Lipton injury within New York, CPLR Section 302(a)(2), and Wein has engaged in tortious activity which he should reasonably have expected would have consequences within New York, CPLR Section 302(a)(3).

The copyright venue statute, 28 U.S.C. § 1400(a), provides that venue in copyright cases is proper...