Merkos L'Inyonei Chinuch v. Otsar Sifrei Lubavitch, Docket No. 02-7465.

• Decision Date: 25 November 2002
• Docket Number: Docket No. 02-7465.
• Citation: 312 F.3d 94
• Parties: MERKOS L'INYONEI CHINUCH, INC., Plaintiff-Appellee, v. OTSAR SIFREI LUBAVITCH, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Second Circuit

312 F.3d 94

MERKOS L'INYONEI CHINUCH, INC., Plaintiff-Appellee, v. OTSAR SIFREI LUBAVITCH, INC., Defendant-Appellant.

Docket No. 02-7465.

United States Court of Appeals, Second Circuit.

Argued: November 6, 2002.

Decided: November 25, 2002.

COPYRIGHT MATERIAL OMITTED

Ronald W. Meister (Arthur J. Greenbaum, Robert W. Clarida, on the brief), Cowan, Liebowitz & Latman, P.C., New York, NY, on behalf of Plaintiff-Appellee Merkos L'Inyonei Chinuch, Inc.

Jacob Laufer, Laufer & Associates, Brooklyn, NY, on behalf of Defendant-Appellant Otsar Sifrei Lubavitch, Inc.

Before OAKES, MINER, and KATZMANN, Circuit Judges.

PER CURIAM.

Defendant Otsar Sifrei Lubavitch, Inc. ("Otsar") appeals the District Court's grant of a preliminary injunction to Merkos L'Inyonei Chinuch, Inc. ("Merkos"). The preliminary injunction enjoins Otsar from disseminating a new version of Siddur Tehillat Hashem, a prayerbook widely used within the Lubavitch movement of Hasidic Judaism, pending resolution of Merkos' claim that Otsar's new version of the prayerbook violates Merkos' copyright in the original Siddur Tehillat Hashem by copying verbatim Rabbi Nissen Mangel's English translation of the Hebrew prayers, which appears in Merkos' Siddur Tehillat Hashem.

We review a District Court's grant of a preliminary injunction for abuse of discretion. Fifth Avenue Presbyterian Church v. City of New York, 293 F.3d 570, 573 (2d Cir.2002) (citing Latino Officers Ass'n v. City of New York, 196 F.3d 458, 462 (2d Cir.1999), cert. denied, 528 U.S. 1159, 120 S.Ct. 1170, 145 L.Ed.2d 1079 (2000)). "A party seeking a preliminary injunction in this Circuit must show: (1) irreparable harm in the absence of the injunction and (2) either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the movant's favor." Random House, Inc. v. Rosetta Books LLC, 283 F.3d 490, 491 (2d Cir.2002) (citing Zervos v. Verizon New York, Inc., 252 F.3d 163, 172 (2d Cir.2001)). We have held that "generally when a copyright plaintiff makes out a prima facie showing of infringement, irreparable harm may be presumed." ABKCO Music, Inc. v. Stellar Records, Inc., 96 F.3d 60, 64 (2d Cir.1996); see also Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir.1985) ("Irreparable harm may ordinarily be presumed from copyright infringement."). This case illustrates the rationale behind this presumption: Since Otsar sells essentially the same product as Merkos to the same market, it will obviously suffer considerable loss if Otsar disseminates its prayerbook, because each sale of an Otsar prayerbook probably results in one less sale of the Merkos' prayerbook.¹ Merkos thus satisfies the "irreparable harm" prong of the preliminary injunction standard, and we turn to the "merits" prong.

"To prevail on a claim of copyright infringement, the plaintiff must demonstrate both (1) ownership of a valid copyright and (2) infringement of the copyright by the defendant." Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 108-09 (2d Cir.2001). Otsar argues that Merkos fails to establish either of these elements.

The Copyright Act provides that "[c]opyright protection subsists ... in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device," and that "[w]orks of authorship include ... (1) literary works." 17 U.S.C. § 102(a)(1); see also Yurman Design, 262 F.3d at 109 ("Under the Constitution and by statute, copyright validity depends upon originality."). Otsar challenges Merkos' claim of a copyright in the Mangel translation on two bases. First, it contends that the translation lacks the originality to be a copyrightable literary work. Second, it asserts that even if the translation is copyrightable, Merkos does not hold the copyright.

We reject Otsar's assertion that the translation is not copyrightable. We have explained that "`[o]riginality' in [the copyright] context `means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.'" Yurman Design, 262 F.3d at 109 (quoting Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). The translation process requires exercise of careful literary and scholarly judgment. As the District Court commented, "[t]he translation of prayers ... involves partly the precision of science but partly the sensitivity and spirit of art. Behind the words that are found in the Hebrew and the words that are used in the English are shades of meaning and subtlety that cannot be labeled functional." The fact that the Mangel translation is designed to serve a practical aim does not render it ineligible for copyright protection. See Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 321-22 (2d Cir. 1996) (fish mannequins are copyrightable because "many objects are both useful and works of artistic craftsmanship. Even useful articles ... can gain copyright protection for any physically or conceptually separable artistic features.") (internal quotations omitted). Thus, we agree with the District Court that the translation is copyrightable. See Toksvig v. Bruce Publishing Co., 181 F.2d 664, 666 (7th Cir.1950) (copyright infringement occurred when a biographer of Hans Christian Anderson who was unfamiliar with Danish copied "original translations made by plaintiff [the author of an earlier work on Anderson] from Danish sources").

The question of whether Merkos holds the copyright in the Mangel translation is closer than the issue of whether the work is copyrightable. Merkos argues that it holds a copyright because Rabbi Mangel produced the translation for Merkos as a "work-for-hire", thus entitling Merkos under 17 U.S.C. § 201(b) to the copyright. Central to resolution of the work-for-hire issue is whether the "work-for-hire" inquiry is governed by the Copyright Act of 1976 (the "1976 Act") or by the Copyright Act of 1909 (the "1909 Act"), a question which turns on whether the relevant contract was entered into prior to January 1, 1978. See Roth v. Pritikin, 710 F.2d 934, 937-40 (2d Cir.), cert. denied, 464 U.S. 961, 104 S.Ct. 394, 78 L.Ed.2d 337 (1983). Under the 1976 Act, the absence of a written agreement between Merkos and Rabbi Mangel will require Merkos to satisfy the multifactored test of Community for Creative Non-Violence v. Reid, 490 U.S. 730, 751-52, 109 S.Ct. 2166, 104 L.Ed.2d 811 (1989) for demonstrating that Rabbi Mangel prepared the translation "within the scope of his or her employment." See 17 U.S.C. § 101. Under the 1909 Act, Merkos would face the lower threshold of demonstrating that the work was prepared at its "instance and expense." Roth, 710 F.2d at 937 n. 3 (citing cases). Resolution of the question of which Act applies requires additional factual development and may implicate issues of law as well. Further, regardless of which Act governs, factual issues about the relationship between Rabbi Mangel and Merkos need to be resolved in order to determine whether Merkos can claim a "work-for-hire" copyright. We need not address the legal questions surrounding which Act should apply at this point, and instead prefer to allow the District Court to address these issues in the first instance after further factual development. We are satisfied that the record at this point contains sufficient evidence in Merkos' favor on the question of whether it holds the copyright not to call into question the District Court's issuance of the preliminary injunction. Thus, while additional factual development is required on both the issue of which Act applies and on whether (under the standard of whichever Act is determined to govern) the translation was prepared as a work-for-hire, and while these issues are (as the District Court noted) potentially close, we agree with the District Court that for purposes of the preliminary injunction inquiry, Merkos has made a sufficient prima facie showing that it owns the copyright to support the preliminary injunction. We intimate no view as to the result that should be reached at trial.

Otsar argues that even if Merkos holds a valid copyright, Otsar's prayerbook does not infringe such copyright. First, it argues that its prayerbook makes "fair use" of the Mangel translation, pointing out that its prayerbook adds user-friendly instructions to the translation and utilizes a different layout than does the original Siddur Tehillat Hashem. Second, it advances what is essentially an "idea-expression merger" argument, asserting that the "copyright law does not permit the monopolization of the recommended form of a religious prayer." The Copyright Act sets forth a four-factor test for assessment of a "fair use" claim: "In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include-(1) the purpose and character of the use, including whether such use is of a commercial nature or is for...