Silverstein v. Penguin Putnam, Inc.

522 F.Supp.2d 579

Stuart Y. SILVERSTEIN, Plaintiff, v. PENGUIN PUTNAM, INC., Defendant.

No. 01 Civ. 309(JFK).

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

November 7, 2007.

COPYRIGHT MATERIAL OMITTED

Mark A. Rabinowitz, Christopher Mickus, Neal, Gerber & Eisenberg, LLP, Chicago, IL, for Plaintiff, Stuart Y. Silverstein.

Richard Dannay, Thomas Kjellberg, Cowan, Liebowitz & Latman, PC, New York, NY, for Defendant, Penguin Putnam, Inc.

Findings of Fact and Conclusions of Law

JOHN F. KEENAN, District Judge.

Background

This case revolves around the poems of Dorothy Parker, the famous writer who was a member of the Algonquin Round Table. Ms. Parker published her literary works mainly during the first half of the 20th century. She authored poems, verses, dramatic reviews, short stories, plays, and screen plays.¹ Her works appeared in various periodicals, including: The New York Tribune, Vanity Fair, Vogue, The New Yorker, New York World, The New York Herald Tribune, The Saturday Evening Post, and Life. Over the years, Ms. Parker collected her poems in several books: Enough Rope (1926), Sunset Gun (1928), Death and Taxes (1931), Not So Deep as a Well (1936), and The Portable Dorothy Parker (1944).

At issue in this case is whether plaintiff Stuart Y. Silverstein's compilation of Dorothy Parker's previously uncollected poems in Not Much Fun: The Lost Poems of Dorothy Parker (Scribner 1996) ("Not Much Fun") is entitled to copyright protection and, if so, whether the defendant Putnam Penguin Inc.'s book Dorothy Parker: Complete Poems (Penguin Books 1999) ("Complete Poems") infringed upon that copyright. Silverstein also raises claims of "reverse passing off" under the Lanham Act and unfair competition and immoral trade practices under New York state law.

On April 4, 2003, this Court entered summary judgment for the plaintiff and enjoined the defendant from selling or further distributing Complete Poems. On appeal, the Court of Appeals for the Second Circuit vacated the judgment and the injunction and remanded the case for trial. Silverstein v. Penguin Putnam, Inc., 368 F.3d 77 (2d Cir.2004).

The Court of Appeals held that issues of material fact existed as to whether Silverstein exercised sufficient creativity in the selection of poems for Not Much Fun for copyright protection to attach. Id. at 78-79, 83. In particular, the Court of Appeals ruled that trial was required to determine if Silverstein exercised any creativity at all in his selection process or if he merely included as many of Parker's uncollected poems as he could find. Id. at 79.

This case was tried without a jury from July 17, 2007 through July 25, 2007. The Court heard the testimony of seven live witnesses: the plaintiff Stuart Y. Silverstein; Jane von Mehren, a former employee of defendant Putnam Penguin, Inc. ("Penguin"); Gillian Blake, a former employee of Scribner, who was the editor assigned to work on Not Much Fun; Michael Millman, a former Penguin employee; David Shanks, the Chief Executive Officer of Penguin; John Makison, the director of Penguin's parent company and the Chairman and Chief Executive of the Penguin Group; and Kathryn Court, president and publisher of Penguin Books, a division of Penguin Group USA. The Court' also viewed and heard the video depositions of Colleen Breese, who edited Complete Poems for Penguin and Professor Randall C. Calhoun, assistant professor of English at Ball State University in Indiana, Dorothy. Parker scholar and the author of Dorothy Parker: A Bio-Bibliography. Calhoun also participated in this case by providing two affidavits dated February 1, 2005 and July 14, 2005, respectively.

I. Findings of Fact

Silverstein included in Not Much Fun every work that he decided was (1) a poem or verse (2) authored by Parker (3) that had not been previously published within a collection. The primary question presented is whether these decisions entailed any creativity at all and, if so, whether the amount of creativity suffices for copyright protection to attach.

The Court finds that Silverstein simply selected for inclusion in Not Much Fun all of the uncollected Parker poems that he could find and that this selection process involved no creativity. His decision that certain works were poems was based objectively on whether the work contained the conventional structural features of a poem. This finding is evidenced by the fact that every poem in Not Much Fun is objectively recognizable as a poem and that Silverstein did not exclude any uncollected Parker poems from the book. It is further supported by the fact that Silverstein represented Not Much Fun as, and the book itself purports to be, a compilation of all of Parker's uncollected poems. Furthermore, Silverstein's decision that certain works were or were not authored by Parker was based on historical evidence and not creative judgment.

A. Silverstein's Compilation of Dorothy Parker's Poems

Some time in early 1994, while looking through an old issue of Life Magazine, Silverstein came upon some Dorothy Parker poems that he recognized had not been previously collected. After searching through more issues of Life and discovering more previously uncollected Parker poems, he came up with the idea of putting together a book of Parker's previously uncollected poems. (Tr. 30.)² The book would ultimately be titled Not Much Fun: The Lost Poems of Dorothy Parker ("Not Much Fun") and contain 121 of Parker's previously uncollected poems.³

In creating Not Much Fun, Silverstein's "goal was to compile as complete a list of items that [he] determined to be poems written by Dorothy Parker." (Tr. 34.) To achieve his goal of completeness, Silverstein went through the various periodicals in which Parker's works had originally appeared, page by page and issue by issue. He went to every library he thought would possibly have something — about twelve libraries in total. He went through originals or microfilm versions of the periodicals, whichever was available to him at a particular library. (Tr. 34-35.) He spent approximately two years searching for uncollected Dorothy Parker poems and verses to include in Not Much Fun. (Tr. 38.)

In 1993, before Silverstein began compiling Parker's uncollected poems, Professor Randall C. Calhoun published Dorothy Parker: A Bio-Bibliography (Greenwood Press 1993) ("Bio-Bibliography".) Calhoun's Bio-Bibliography lists both the collected and uncollected works of Dorothy Parker. In preparing Bio-Bibliography, Calhoun read biographies of Parker and collected all of the Parker works that he could find, gathering unpublished ones from old newspapers and magazines. (Calhoun Dep. Tr. 20-21.)⁴ After gathering Parker's works, Calhoun listed their titles and publication information in Bio-Bibliography under one of six categories: books, short stories, screenplays, published interviews, miscellaneous work, and individual pieces from magazines and newspapers. (Calhoun Dep. Tr. 34-37.) Within this last category, each of the particular magazines and newspapers that published Parker's works has its own subheading, under which the individual Parker works are classified as, for example, long articles, poetry, prose, and book reviews. (PX 8.)⁵ Calhoun believes Bio-Bibliography is the "most exhaustive catalogue of works by and about Dorothy Parker ever compiled." (Calhoun Dep. Tr. 52.)

Although Calhoun's Bio-Bibliography lists the titles and publication information to virtually all of the poems ultimately compiled by Silverstein in Not Much Fun, Silverstein was unaware of Calhoun's book until late 1994 or early 1995. (Tr. 32.) As a result, Silverstein had to discover most of Parker's uncollected poems on his own. By the time Silverstein discovered Bio-Bibliography, he had already located all but one of the poems listed in that book and was "appalled" that he had missed that poem. (Tr. 37.)

Silverstein's selection process consisted of three steps. When Silverstein located an item, he would first "determine whether or not [he] considered it to be a poem or a verse." (Tr. 38.) If Silverstein determined that a work was a poem or a verse, he would next determine whether it was written by Dorothy Parker. Finally, he would determine whether the poem or verse had been collected previously, (Tr 42.) Silverstein included every work that he determined to be a poem or verse written by Parker that had not previously been published in a collection. He claims that the first two steps — determining that a work was a poem or verse and attributing it to Parker — entailed creative decision making that confers copyright protection to Not Much Fun.

1. Step One: Poem or Verse?

The Court finds that Silverstein sought to compile every uncollected Dorothy Parker poem he could find. Accordingly, he employed a broad, structural definition of "poem" in determining whether an individual work was a poem or not. This determination did not entail creativity.

The Court heard testimony regarding the conventional definition of "poem" under which Silverstein operated. Poems are typically published in lines and stanzas, often indented from the margins and set off from any surrounding text. (Calhoun Dep. Tr. 92-93.) A poem sometimes possesses rhyme and meter, though this is not necessary.⁶% (Calhoun Dep. Tr. 118-19.) The Court also observes that a poem is typically free from the usual rules of grammar, punctuation, and capitalization. In contrast to a "poem," "prose" runs from margin to margin and is organized in paragraphs and sentences. The first line of each paragraph is indented, and sentences continue and run seamlessly from line to line. Prose follows the rules of grammar, punctuation, and capitalization.

Determining that a writing meets the structural criteria of a poem is a fairly obvious decision, one differing substantially from the question of whether a work is poetic or poetry. (Calhoun Dep. Tr. 87-88.) A work can be written in the form of a poem, yet knowledgeable people may...